UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`BLACKBERRY CORPORATION AND BLACKBERRY LIMITED
`Petitioners
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`Case IPR2013-00016 (JYC)
`Patent U.S. 6,441,828
`____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING IN VIEW OF
`SETTLEMENT PURSUANT TO 35 U.S.C. §317(a),
`
`JOINT NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C.
`§317(b) AND 37 C.F.R. § 42.74, AND
`
`JOINT REQUEST TO KEEP SEPARATE PURSUANT TO 35 U.S.C.
`§317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`BLACKBERRY CORPORATION AND BLACKBERRY LIMITED
`Petitioners
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`Case IPR2013-00016 (JYC)
`Patent U.S. 6,441,828
`____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING IN VIEW OF
`SETTLEMENT PURSUANT TO 35 U.S.C. §317(a),
`
`JOINT NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C.
`§317(b) AND 37 C.F.R. § 42.74, AND
`
`JOINT REQUEST TO KEEP SEPARATE PURSUANT TO 35 U.S.C.
`§317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`
`
`
`
`The Patent Owner and the Petitioners (collectively “the Parties”) have
`
`reached a settlement and jointly request that the Board terminate this Inter Partes
`
`Review (“IPR”) and cancel the Oral Argument. The Patent Owner requests that
`
`the Board enter the pending Motion to Amend, and the Petitioners agree not to
`
`oppose entry of the Motion to Amend. The Parties jointly request that the Board
`
`treat the Settlement Agreement as business confidential information and keep it
`
`separate from the file of the involved patent.
`
`Statement of Precise Relief Requested
`
`The Patent Owner requests that the Board grant “Patent Owner’s Motion to
`
`Amend the Patent” (“Motion to Amend”) filed with the Patent Trial and Appeal
`
`Board (“PTAB”) on May 20, 2013, which asks the PTAB to cancel claims 6, 7, 15,
`
`16, and 18 of the ’828 Patent and replace them with proposed substitute claims 19,
`
`20, 21, 22, and 23 set out in the Motion to Amend. The Petitioners agree not to
`
`oppose entry of the Motion to Amend.
`
`The Parties jointly request that the Board terminate this IPR and cancel the
`
`Oral Argument, currently scheduled for 18 October 2013 at 3:30 PM.
`
`The Parties jointly request that the Board treat the Settlement Agreement,
`
`Ex. 2012, as business confidential information and keep it separate from the file of
`
`the involved patent, and made available only to Federal Government agencies on
`
`written request or to any person only on a showing of good cause.
`2
`
`
`
`
`
`Statement of Reasons for the Relief Requested
`
`The Parties have reached a settlement agreement regarding their disputes
`
`relating to U.S. Patent 6,441,828 (“the “828 Patent”). Because the Board has not
`
`decided this IPR on its merits, the Parties jointly request that the Board terminate
`
`this IPR pursuant to 35 U.S.C. §317(a). The Parties also jointly request that the
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`Board cancel the Oral Argument, currently scheduled for 18 October 2013 at 3:30
`
`PM.
`
`The Patent Owner requests that the Board grant MobileMedia’s “Patent
`
`Owner’s Motion to Amend the Patent” (“Motion to Amend”) filed with the Patent
`
`Trial and Appeal Board (“PTAB”) on May 20, 2013, which asks the PTAB to
`
`cancel claims 6, 7, 15, 16, and 18 of the ’828 Patent and replace them with
`
`proposed substitute claims 19, 20, 21, 22, and 23 set out in the Motion to Amend.
`
`Petitioners agree not to oppose entry of the Motion to Amend.
`
`The Parties file a copy of the settlement agreement (Ex. 2013) with the
`
`PTAB, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74.
`
`The Parties jointly request that this Settlement Agreement be treated as
`
`business confidential information and be kept separate from the file of the involved
`
`patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.70(c). Ex. 2013 is being
`
`submitted concurrently herewith having “availability” in the PRPS system of
`
`“Parties and Board Only.” The Parties jointly request that this settlement
`3
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`
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`agreement (Ex. 2013) be made available only to Federal Government agencies on
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`written request or to any person only on a showing of good cause.
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`If any fees are due in connection with this matter, the Commissioner is
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`hereby authorized to charge them to Attorney Deposit Account 50-3081.
`
`Date: October 17, 2013
`
`
`/Anthony C. Coles, Reg. No. 34,139/
`Anthony C. Coles, Reg. No. 34,139
`Attorney for Patent Owner
`
`/Robert C. Mattson Reg. No. 42, 850 /
`Robert C. Mattson, Reg. No. 42,850
`Attorney for Petitioners
`
`
`
`
`
`
`4
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`
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`EXHIBIT APPENDIX
`
`
`
`Description
`
`Declaration of Dr. Vijay K. Madisetti, dated May 20, 2013
`
`CV of Dr. Vijay K. Madisetti
`
`Proposed new claims marked up to show changes from the original
`‘828 patent claims for which they are proposed as substitutes
`
`Clean version of proposed new claims
`
`Japanese Patent Application JP‐10‐254231
`
`Japanese Patent Application JP 11‐016215
`
`Certified Translation of JP 10‐254231
`
`Certified Translation of JP 11‐016215
`
`Markman Order in MobileMedia Ideas, LLC v.
`
`Research In Motion, Ltd, Civil Action No. 3:11‐CV‐2353‐N (N.D. Tex.),
`dated February 27, 2013
`
`U.S. Patent Application No. 08/384,012
`
`Second Declaration of Dr. Vijay K. Madisetti, dated August 19, 2013
`
`Presentation Slides
`
`Settlement Agreement (Business Confidential)
`
`
`
`5
`
`Exhibit
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies that this JOINT MOTION TO TERMINATE
`PROCEEDING IN VIEW OF SETTLEMENT PURSUANT TO 35 U.S.C.
`§317(a), JOINT NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C.
`§317(b) AND 37 C.F.R. § 42.74, AND JOINT REQUEST TO KEEP
`SEPARATE PURSUANT TO 35 U.S.C. §317(b) AND 37 C.F.R. § 42.74(c) and
`EXHIBIT 2013 were served on October 17, 2013 in their entirety electronically
`on:
`
`CPdocketMattson@oblon.com
`
`/John C. Stellabotte, Reg. No. 47,969/
`John C. Stellabotte, Reg. No. 47,969
`
`
`
`6
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`
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