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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RAYMARINE, INC.
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`Petitioner
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`v.
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`NAVICO HOLDING AS
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`Patent Owner
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`Case IPR2013-00496
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`Patent 8,305,840
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`JOINT MOTION BY PETITIONER AND PATENT OWNER T0
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 and 37
`C.F.R. § 42.74
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`LEGAL02/34732009v1
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`3
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`‘
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R..§ 42.74, Petitioner
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`Raymarine Inc. (“Raymarine”) and Patent Owner Navico Holding AS
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`(“Navico”) jointly request termination of the inter partes review of US. Patent
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`No. '8,3 05,840 Case No. IPR2013~00496.
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`I.
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`Termination of Case No. IPR2013—00496 Would Be Appropriate.
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`Termination of Case No. IPR2013-00496 by the PTAB would be
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`appropriate. This case is at a sufficiently early stage of the trial, and no motions
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`or petitions are outstanding in this case.2 Further, the parties entered into a
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`Confidential Settlement Agreement (attached hereto as Exhibit NAV-2002).
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`The Confidential Settlement Agreement requires both parties to terminate all
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`disputes, including: (i) Inter Partes Review Proceedings Nos. 2013-00355,
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`2013-00496 and 2013-00497; (ii) In the Matter ofCertain Marine Sonar Imaging
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`Devices, Products Containing The Same, And Components Thereof before the
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`US. International Trade Commission, Washington, DC, Inv. No. 337-TA—898;
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`and (iii) Navico, Inc. and Navico Holding AS v. Raymarz’ne Inc. in the US. District
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`Court for the Northern District of Oklahoma, Civil Action No. 4:13-cv-005 54 .
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`Therefore, termination of this case is appropriate because (i) the case is at a
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`2 Patent Owner has not filed a fill response, and one is not due until May 12, 2014.
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`LEGAL02/3 4732009v1
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`‘ sufficiently early stage of the trial, (ii) the parties have settled their disputes, (iii)
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`Patent Owner has agreed to dismiss the related litigation, and (iv) the parties to
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`_ this case agree that this inter partes review should be terminated.
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`As set forth in 35 U.S.C. § 317 and 37 C.F.R. § 42.74, the Confidential
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`Settlement Agreement between Raymarine and Navico has been made in writing,
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`and a true‘and correct copy is being filed with the Patent Office as an exhibit to
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`this Joint Motion. As stated in 35 U.S.C. § 317(a), because Raymarine and Navico
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`request this termination, no estoppel under 35 U.S.C. § 315(e) shall attach as to
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`Petitioner Raymarine. Further, a joint request to treat the Confidential Settlement
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`Agreement as business confidential information under 35 U.S.C. § 317(b) and 37
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`CPR. § 4274(0) is filed concurrently herewith.
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`Therefore, Raymarine and Navico respectfully request termination of the
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`inter partes review of US. Patent No. 8,305,840, Case No. IPR2013-00496.
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`March L51, 2014
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`Respectfully Submitted,
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`Reg. No. 56,950
`Alston & Bird LLP
`Attorneys for Patent Owner Navico
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`LEGAL02/34732009vl
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`
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`By 414—.—
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`Thomas King
`Reg. No. 69,721
`Haynes and Boone, LLP
`Attorneys for Petitioner Raymarine
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`LEGAL02/34732009v1
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`-v..~mu——~—_——~—~.—MN~_~..MWW~__HWWWWWWW*_——————~—
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`Updated Exhibit Listing
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`NAV -— 2001
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`Declaration by Alan Proctor to Establish Conception and
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`Reduction to Practice Prior to August 28, 2008
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`NAV —— 2002
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`Confidential Settlement Agreement
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`LEGAL02/34732009V1
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`Inter Partes Review of US. Patent No. 8,3 05,840 - IPR2013-00496
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`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies service on
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`the Petitioner of a copy of this Joint Motion by Petitioner and Patent Owner to
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`Terminate Proceeding and an Updated Exhibit Listing via electronic delivery
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`directed to davidmccombs.igr@haynesboone.com as submitted in the Petition for
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`Inter Partes Review:
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`David L. McCombs
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`HAYNES AND BOONE, LLP
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`2323 Victory Ave.
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`Suite 700
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`Dallas, TX 75219
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`Christopher TL Douglas
`Reg. No. 56,950
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`LEGAL02/34732009v1
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