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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`Case IPR2014-00062
`Patent 7,802,310
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`Title: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING
`SYSTEM
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`Petitioners Rackspace US, Inc. and Rackspace Hosting, Inc. (“Petitioner”)
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`and Patent Owner PersonalWeb Technologies, LLC and Level 3 Communications
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`have reached a settlement and, pursuant to 37 C.F.R. §§ 42.72 and 42.74, and the
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`Board’s authorizing order dated October 6, 2014, jointly request termination of this
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`inter partes review of U.S. Patent No. 7,802,310 under 35 U.S.C. § 317(a).
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`The parties have settled their disputes and have executed a settlement
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`agreement to terminate this proceeding, as well as four other IPRs involving the
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`same parties and the related district court litigation styled PersonalWeb Tech. LLC
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`et al v. Rackspace US, Inc. et al., No. 6-12-cv-00659 (E.D. Tex.). The parties’
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`Stipulation of Dismissal, concurrently-filed in the district court litigation is
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`included herewith as Exhibit 2024. Pursuant to 37 C.F.R. § 42.74(b), the parties’
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`settlement agreement is in writing, and a true and correct copy is being filed as
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`Exhibit 1026.1 The parties are also filing a joint request to treat the settlement
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`agreement as business confidential information and to keep it separate from the
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`files and the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`1 The settlement agreement is being filed electronically with access to the “Parties
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`and Board Only.”
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`1
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`Statement of Precise Relief Requested
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`The Parties jointly request that the Board terminate this IPR as to both
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`parties, without rendering a final written decision.
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`Statement of Reasons for the Relief Requested
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`Termination of this proceeding entirely as to all parties is proper for
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`numerous reasons, including the following.
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`Incomplete Record. The record in this proceeding is incomplete, and the
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`Board has not yet decided the merits of this proceeding. For example, Petitioner
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`has not filed a reply brief or reply declarations, Petitioner has not addressed the
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`arguments and evidence from the Patent Owner’s Response, Patent Owner has not
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`yet deposed any reply witnesses and has not yet filed observations on cross-
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`examination, neither party has filed (or responded to) a motion to exclude, and no
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`oral hearing has yet been requested or held.
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`The Board has terminated, without final written decision, other inter partes
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`review proceedings having very similar postures. For example, in Sealed Air
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`Corporation v. Pregis Innovative Packaging, Inc., the Board terminated five
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`related IPRs without reaching final written decision. In those proceedings, the
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`petitioner had not yet filed its replies to the patent owner’s responses, and no
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`motions were outstanding at the time of termination. IPR2013-00554, Paper 47, p.
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`2 (September 12, 2014). The instant IPR is in the same procedural posture:
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`2
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`Petitioner has not yet filed its Reply, and there are no outstanding motions before
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
`
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`the Board.
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`Similarly, in Xerox Corp. v. RR Donnelley & Sons Co., the Board terminated
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`two related IPRs without reaching final written decision. Again, the petitioner had
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`not yet filed its replies to the patent owner’s responses. The Board therefore
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`found that “the record lacks full briefing…and accordingly lacks ‘streamlin[ed,]
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`and converg[ed]’ issues, as necessary to render a decision in a ‘timely, fair, and
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`efficient manner.’” Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00529,
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`Paper 21, p. 3 (August 29, 2014). Here also, the record lacks full briefing, and
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`numerous issues have not been streamlined. Accordingly a final written decision is
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`not appropriate.
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`Finally, in Apex Medical Corp. v. ResMed Limited, the Board terminated an
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`IPR without reaching final written decision, even where the petitioner had filed its
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`reply. IPR2013-00512, Paper 39 (September 12, 2014), pp. 2-3. The Board
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`entered judgment by terminating the proceeding with respect to both parties,
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`specifically noting that “the record is not yet closed.” Id. at p. 3. As in Apex
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`Medical Corp., the record in this proceeding is not yet closed, and termination as to
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`all parties is appropriate.
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`Under these circumstances, there is every reason to honor the Parties’ wishes
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`to terminate as to both parties without final written decision.
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`3
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`
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`No Further Participation by Petitioner. Petitioner hereby informs the Board
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`that Petitioner will not be filing any reply papers in this proceeding, will not be
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`attending any oral hearing in this proceeding, will not oppose any motions to
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`exclude in this proceeding, and will not be participating further in this proceeding
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`in any respect before the Board.
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`Thus, because the record will not be developed and is currently incomplete,
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`termination as to all parties is favored.
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`Global Settlement Between the Parties. The settlement is a global settlement
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`between Petitioner and Patent Owners (PersonalWeb and Level 3—who both
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`represent that they practice the patent at issue in their respective businesses). After
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`the requested termination of this proceeding and the four other IPRs involving the
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`same parties, and given the Stipulation of Dismissal concurrently filed with the
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`district court, no other disputes between the parties remain. There is no other
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`litigation or dispute in any court or forum involving Patent Owner and Petitioner.
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`Maintaining this Inter Parties Review Would Discourage Settlements of
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`Concurrent Proceedings and Waste Judicial Resources. Congress and federal
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`courts have expressed a strong interest in encouraging settlement of disputes. See,
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`e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of
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`[Fed. R. Civ. P.] 68 is to encourage the settlement of litigation.”); Bergh v. Dept. of
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`Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of
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`4
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`cases.”), cert denied, 479 U.S. 950 (1986); and 35 U.S.C. § 317(a). Public policy
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`strongly favors allowing parties to settle in all respects. Indeed, the USPTO’s
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`Office Patent Trial Practice Guide expressly states:
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`“N. Settlement. There are strong public policy reasons to favor
`settlement between the parties to a proceeding. The Board will be
`available to facilitate settlement discussions, and where appropriate,
`may require a settlement discussion as part of the proceeding. The
`Board expects that a proceeding will terminate after the filing of a
`settlement agreement, unless the Board has already decided the merits
`of the proceeding.”
`The Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14,
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`2012) (emphasis added).
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`Thus, maintaining this review in any respect after the parties’ settlement
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`would be contrary to public policy and would discourage future settlements by
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`removing a significant motivation for settlement; eliminating litigation risk by
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`resolving the parties’ disputes and ending the pending proceedings between them.
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`Moreover, a reason courts endorse settlement is preservation of judicial
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`resources. Maintaining this review in any respect after the parties have settled
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`their disputes would waste, rather than conserve, judicial resources of both the
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`USPTO and the Federal Circuit. Accordingly, in addition to the issues discussed
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`above, Patent owner will be prejudiced if this proceeding is not terminated as
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`5
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`requested, with respect to additional attorneys’ fees and costs that would need to be
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`incurred in connection with the proceedings.
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`Status of Litigations and Proceedings
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`As instructed by the Board in the conference authorizing this joint motion,
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`Patent Owner lists the following additional active litigation proceedings involving
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`the patent, or patents within the same family, and their status:2
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`Litigation
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`Court
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`Status
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`PersonalWeb Techs. LLC et al v. EMC Corp.
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`N.D. Ca
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`Pending
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`et al., No. 5-13-cv-01358
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`(Stayed)
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`PersonalWeb Techs. LLC et al v. Facebook
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`N.D. Ca
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`Pending
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`Inc., No. 5-13-cv-01356
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`(Stayed)
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`PersonalWeb Techs. LLC et al v. NetApp, Inc.,
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`N.D. Ca
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`Pending
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`No. 5-13-cv-01359
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`(Stayed)
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`PersonalWeb Techs. LLC v. Google, Inc. et al,
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`N.D. Ca
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`Pending
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`No. 5-13-cv-01317
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`(Stayed)
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`2 Patent Owner notes that Apple, Inc. filed a petition for IPR regarding U.S. Patent
`No. 7,802,310 (IPR2013-00596), and that Google, Inc. and Youtube, LLC filed
`petitions for IPR regarding U.S. Patent Nos. 6,415,280 (IPR2014-00977),
`7,802,310 (IPR2014-00978), 6,928,442 (IPR2014-00979), and 5,978,791
`(IPR2014-00980).
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`6
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`PersonalWeb Techs. LLC et al v. Int’l Bus.
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`E.D. Tex. Pending
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`Mach. Corp., No. 6-12-cv-00661
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`(Stayed)
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`PersonalWeb Techs. LLC et al v. Apple Inc.,
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`N.D. Ca. Pending
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`No. 6-12-cv-00660
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`(Stayed)
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`PersonalWeb Techs. LLC et al v. Yahoo! Inc.,
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`E.D. Tex. Pending
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`No. 6-12-cv-00658
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`Patent Owner represents that no other litigations or proceedings are pending
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`which involve the patent.
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`The fact that these other litigations are currently pending between the Patent
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`Owner and third parties does not outweigh the reasons favoring termination,
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`including the public policy strongly favoring the requested termination,
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`conservation of judicial resources strongly favoring the requested termination, the
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`incomplete record strongly favoring the requested termination, and prejudice to the
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`parties strongly favoring the requested termination. Further, Patent Owner notes
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`that (with the exception of EMC and Apple), none of the third parties listed above
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`elected to file IPR petitions within the one (1) year statutory period and chose not
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`to file motions for joinder with this proceeding (or the other instituted IPRs) within
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`the required one month period following the institution decision. 35 U.S.C. §
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`315(b); and 37 C.F.R. § 42.122(b).
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`7
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`Conclusion
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`Accordingly, the parties respectfully request termination of this proceeding
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`in its entirety as to all parties. Any reasonable weighing of the issues/factors
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`discussed herein heavily favors termination of the entire proceeding as to all
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`
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`/ Joseph A. Rhoa/
`Joseph A. Rhoa
`Registration No. 37,515
`NIXON & VANDERHYE PC
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`Attorney for Patent Owner
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`parties.
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`Jointly submitted,
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`/David W. O’Brien/____
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`David W. O’Brien
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`Registration No. 40,107
`HAYNES AND BOONE, LLP
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`Attorney for Petitioner
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`October 16, 2014
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`8
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit No. Brief Description
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`Claim construction by the U.S. District Court for the District of
`Massachusetts.
`Decision regarding institution in IPR 2013-00085, dated May 17,
`2013.
`Altnet’s Opening Claim Construction Brief, in case styled Altnet
`Inc. v. Streamcast Networks, Inc., CV-06-5086, dated March 29,
`2007.
`Excerpts from file history of U.S. 7,949,662 to Farber et al.
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`Patent Owner’s Opening Claim Construction Brief in litigation,
`dated June 5, 2013.
`Patent Owner’s Reply Claim Construction Brief in litigation, dated
`July 8, 2013.
`Excerpts from file history of U.S. 5,649,196 to Woodhill.
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`Decision on rehearing in IPR 2013-00082, dated June 5, 2013.
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`Decision regarding institution in IPR 2013-00082, dated May 17,
`2013
`U.S. Patent No. 5,978,791 to Farber et al.
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`Claim Construction Order in related litigations (Aug. 5, 2013).
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`Declaration of Robert Dewar
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`Declaration of Kevin Bermeister
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`Claim Construction Order in related litigations (March 21, 2014)
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`Deposition Transcript of Melvin R. Mercer
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`Skype License Agreement
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`2001
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`2002
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`2005
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`2009
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`2010
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`2011
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`2012*
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`2013*
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`2014
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`2015
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`2016
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`Brilliant Digital/Altnet License Agreement
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`Sharman License Agreement
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`Deposition Transcript of Narashimha Reddy
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`Blickenstaff
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`Langer document submitted by EMC (Reddy Dep. Ex. 1).
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`Updated Declaration of Robert Dewar
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`Updated Declaration of Kevin Bermeister
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`Joint Stipulation of Dismissal with Prejudice in Related Litigation
`(Oct. 16, 2014)
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`Parties’ Joint Motion to Terminate
`IPR2014-00062 (U.S. Patent No. 7,802,310)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.105, that
`service was made on the Petitioner as detailed below.
`Date of service October 16, 2014
`Manner of service By email upon counsel of record listed below (per agreement)
`Docs. served Joint Motion to Terminate and exhibit filed therewith
`Persons served David O'Brien
`Haynes and Boone, LLP
`600 Congress Avenue, Suite 1300
`Austin, TX 78701-3285
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`/ Joseph A. Rhoa/
`Joseph A. Rhoa
`Registration No. 37,515
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