`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`INTRALINKS, INC.,
`Petitioner,
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`v.
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`LONE STAR DOCUMENT MANAGEMENT, LLC,
`Patent Owner.
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`_______________
`
`Case CBM2016-00005
`Patent 6,918,082
`_______________
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`JOINT MOTION TO TERMINATE WITH
`REQUEST TO KEEP SEPARATE
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`CBM2016-00005
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`Attorney Docket No. 715510000006
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`I.
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`INTRODUCTION
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`On January 8, 2016, the Board authorized the parties to jointly file a Motion
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`to Terminate this proceeding by January 22, 2016. Petitioner Intralinks, Inc.
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`(“Intralinks”) and Patent Owner Lone Star Document Management, LLC (“Lone
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`Star”) jointly move to terminate the above-captioned proceeding in view of the
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`parties’ agreement to settle their disputes. The parties include a true copy of the
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`settlement agreement and jointly request that the agreement be kept separate
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`pursuant to 37 CFR § 42.74(c). As explained below, there is good cause for
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`granting the motion to terminate and the request to keep separate.
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`II. BACKGROUND
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`On October 13, 2015, Intralinks filed a petition requesting covered business
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`method review of U.S. Patent No. 6,918,082 (the “’082 Patent”) (the “Petition”).
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`On October 14, 2015, Intralinks filed a Complaint for Declaratory Judgment
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`in the U.S. District Court for the Southern District of New York (“SDNY”) seeking
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`a declaration of invalidity of the ’082 patent, Intralinks, Inc. v. Lone Star
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`Document Management, LLC, Case No. 15-cv-8064-JSR (S.D.N.Y.).
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`On November 18, 2015, the parties attended an Initial Pretrial Conference
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`before Judge Rakoff in the SDNY.
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`On November 19, 2015, the parties filed a stipulation of voluntary dismissal
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`in the SDNY without prejudice.
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`Attorney Docket No. 715510000006
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`On December 29, 2015, the parties executed a Confidential Settlement
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`Agreement and Release (“Settlement Agreement”) agreeing to settle their disputes
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`in connection with the ’082 Patent and agreeing to take reasonable actions to seek
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`dismissal of the current CBM proceeding before the Board. A copy of the
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`Settlement Agreement is attached as Ex. 1003. There are no other pending
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`proceedings between the parties.
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`III. GOOD CAUSE EXISTS FOR GRANTING THIS MOTION TO
`TERMINATE
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`Good cause exists for terminating this proceeding because the parties have
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`settled their disputes regarding the ’082 Patent and have agreed to jointly seek
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`dismissal of this CBM proceeding. See Ex. 1003 at § 3. There is no co-pending
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`district court litigation, as the parties jointly dismissed the SDNY district court
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`litigation before executing the Settlement Agreement. There are no other pending
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`legal proceedings between the parties.
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`This CBM proceeding has not yet been instituted, and Lone Star’s
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`preliminary response is not due until February 3, 2016. Therefore, judicial
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`economy favors termination at this stage.
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`IV. THE SETTLEMENT AGREEMENT SHOULD BE TREATED AS
`BUSINESS CONFIDENTIAL INFORMATION
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`The parties request that the settlement agreement (Exhibit 1003) be treated
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`as business confidential information and kept separate from the file. Pursuant to
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`35 U.S.C. § 317(b), upon request, “the agreement or understanding shall be treated
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`as business confidential information, shall be kept separate from the file of the
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`involved patents, and shall be made available only to Federal Government agencies
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`on written request, or to any person on a showing of good cause.” 35 U.S.C.
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`§ 317(b); see also 37 C.F.R. § 42.74(c). The parties’ request is consistent with the
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`standards set forth in 35 U.S.C. § 317, which govern settlement of instituted
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`reviews.
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`V. CONCLUSION
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`
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`Because the parties have demonstrated that good cause exists for granting
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`this Motion, the parties respectfully request that the Board grant this Motion to
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`Terminate with Request to Keep Separate.
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`Dated: January 19, 2016
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`Respectfully submitted,
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`
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`
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`By /s/ Jonathan Bockman
`Jonathan Bockman
`Registration No.: 45,640
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Ste. 400
`McLean, Virginia 22102-4220
`Tel: (703) 760-7769
`Fax: (703) 760-7777
`jbockman@mofo.com
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`Fahd Hussein Patel
`Registration No.: 61,780
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Ave, NW Ste. 6000
`Washington, DC 20006-1888
`Tel: (202) 887-1500
`Fax: (202) 887-0763
`fpatel@mofo.com
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`
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`By /s/ Timothy Devlin
`Timothy Devlin
`Counsel for Patent Owner
`Registration No 41,706
`Devlin Law Firm LLC
`1306 N. Broom Street, Suite 1
`Wilmington, DE 19806
`T: (302) 449-9010
`F: (302) 353-4251
`tdevlin@devlinlawfirm.com
`xzhang@devlinlawfirm.com
`mmcclain@devlinlawfirm.com
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`Attorney Docket No. 715510000006
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`A copy of this JOINT MOTION TO TERMINATE WITH REQUEST TO
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`KEEP SEPARATE has been served on Patent Owner, Lone Star Document
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`Management, LLC via e-mail on the date listed below:
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`
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`/s/ Jonathan Bockman
`Jonathan Bockman
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`
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`Timothy Devlin
`Counsel for Patent Owner
`Registration No 41,706
`Devlin Law Firm LLC
`1306 N. Broom Street, Suite 1
`Wilmington, DE 19806
`T: (302) 449-9010
`F: (302) 353-4251
`tdevlin@devlinlawfirm.com
`xzhang@devlinlawfirm.com
`mmcclain@devlinlawfirm.com
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`Dated: January 19, 2016
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`la-1307850