`Joint Motion To Terminate
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR2013-00568
`U.S. Patent No. 8,217,902
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`Case No. IPR2013-00568
`Joint Motion To Terminate
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Wintek Corporation and Patent
`
`Owner TPK Touch Solutions Inc. jointly request termination of IPR2013-00568,
`
`which is directed to U.S. Patent No. 8,217,902. The parties have settled their
`
`disputes insofar as they relate to U.S. Patent No. 8,217,902, and have reached
`
`agreement to terminate this inter partes review.
`
`The parties have entered into a written Settlement Agreement, a true copy of
`
`which has been submitted as Exhibit No. 2029. The parties desire and jointly
`
`request that this Settlement Agreement be treated as confidential business
`
`information and that it be kept separate from the files of U.S. Patent No. 8,217,902
`
`and this inter partes review proceeding in accordance with 35 U.S.C. § 317(b) and
`
`37 C.F.R. § 42.74(c). The parties concurrently are filing a separate joint request to
`
`this effect.
`
`Pursuant to the Settlement Agreement, the parties have resolved all
`
`litigations and proceedings relating to U.S. Patent No. 8,217,902 , including TPK
`
`Touch Solutions Inc. v. Wintek Corp., Civ. A. No. 3:13-CV-02218-VC (N.D. Cal.)
`
`(“California Action”). Specifically, pursuant to sections 1.6.1 and 7.1 of the
`
`Settlement Agreement, the parties have agreed to dismiss the California Action
`
`with prejudice. Patent Owner further represents that there are currently no other
`
`pending proceedings involving U.S. Patent No. 8,217,902, except for ex parte
`
`reexamination Control No. 90/012,869, which is presently stayed and includes
`
`
`
`Case No. IPR2013-00568
`Joint Motion To Terminate
`
`additional claims not affected by any inter partes review proceedings. Moreover,
`
`Patent Owner represents that it does not contemplate initiating any proceedings
`
`involving U.S. Patent No. 8,217,902 in the foreseeable future, either against
`
`Petitioner or any third party.
`
`The parties respectfully submit that termination is appropriate because
`
`Patent Owner has agreed to license U.S. Patent No. 8,217,902 to Petitioner (see
`
`Settlement Agreement § 2.1), the parties have settled all disputes with respect to
`
`U.S. Patent No. 8,217,902 and the parties have agreed to terminate this inter partes
`
`review. No public interest or other factors militate against termination of this
`
`proceeding.
`
`In view of the foregoing, the parties jointly and respectfully request that the
`
`instant proceeding be terminated.
`
`Date: November 25, 2014
`
`Respectfully submitted,
`
`By:
`
`/Joseph E. Palys, Reg. No. 46508/
`Joseph E. Palys, Reg. No. 46,508
`Email: josephpalys@paulhastings.com
`Naveen Modi, Reg. No. 46,224
`Email: naveenmodi@paulhastings.com
`PAUL HASTINGS LLP
`
`Attorneys for Petitioner –
`Wintek Corporation
`
`2
`
`
`
`Case No. IPR2013-00568
`Joint Motion To Terminate
`
`/Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti, Reg. No. 47,024
`Email: joe.richetti@bryancave.com
`BRYAN CAVE LLP
`
`David Bilsker, Reg. No. 39,611
`Email: davidbilsker@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`Attorneys for Patent Owner –
`TPK Touch Solutions Inc.
`
`3
`
`
`
`Case No. IPR2013-00568
`Joint Motion To Terminate
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 was served
`
`electronically via e-mail on November 25, 2014, in its entirety on the following:
`
`Joseph E. Palys
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, DC 20005
`josephpalys@paulhastings.com
`
`Naveen Modi
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, DC 20005
`naveen.modi@paulhastings.com
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti
`Lead Attorney for Patent Owner
`Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Patent Owner –
`TPK Touch Solutions Inc.
`
`Date: November 25, 2014
`
`
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