Paper No.
`Filed: January 15, 2015
`
`
`
`Filed on behalf of Microsoft Corporation and VirnetX, Inc.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICROSOFT CORPORATION and APPLE INC.
`Petitioners
`v.
`VIRNETX, INC.
`Patent Owner
`_____________
`
`Case IPR2014-00403
`U.S. Patent No. 7,987,2741
`_____________
`
`
`
`UNOPPOSED MOTION TO TERMINATE PROCEEDING WITH
`RESPECT TO MICROSOFT CORPORATION
`
`
`1
`Case IPR2014-00483 has been joined with this case.
`
`
`
`
`Filed: January 15, 2015
`
`
`
`Filed on behalf of Microsoft Corporation and VirnetX, Inc.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICROSOFT CORPORATION and APPLE INC.
`Petitioners
`v.
`VIRNETX, INC.
`Patent Owner
`_____________
`
`Case IPR2014-00403
`U.S. Patent No. 7,987,2741
`_____________
`
`
`
`UNOPPOSED MOTION TO TERMINATE PROCEEDING WITH
`RESPECT TO MICROSOFT CORPORATION
`
`
`1
`Case IPR2014-00483 has been joined with this case.
`
`
`
`
`
`Precise Relief Requested
`
`IPR2014-00403
`U.S. Patent No. 7,987,274
`
`
`Pursuant
`
`to 35 U.S.C. § 317(a), Petitioner Microsoft Corporation
`
`(“Microsoft” or “Petitioner”) and Patent Owner VirnetX, Inc. (“Patent Owner” or
`
`“VirnetX”) jointly request that this inter partes review proceeding (“this Review”)
`
`involving U.S. Patent No. 7,987,274 (“the ’274 patent”) be terminated with respect
`
`to Microsoft based on a settlement between Petitioner Microsoft and Patent
`
`Owner(“the Parties”). Microsoft and VirnetX conferred with Petitioner Apple Inc.
`
`and Apple does not oppose termination with respect to Microsoft.
`
`II. Reasons for Granting the Motion
`
`Generally, the Board expects that a proceeding will terminate after the filing
`
`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
`
`instant motion in email dated January 13, 2015. IPR2013-00428, Paper No. 56
`
`provides guidance as to the content of a motion to terminate. There, the Board
`
`indicates that a joint motion, such as this one, should (1) include a brief
`
`explanation as to why termination is appropriate; (2) identify all parties in any
`
`related litigation involving the patents at issue; (3) identify any related proceedings
`
`currently before the Office, and (4) discuss specifically the current status of each
`
`such related litigation or proceeding with respect to each party to the litigation or
`
`proceeding. Id. at 2. This motion satisfies each of the above requirements and is
`
`
`
`1
`
`
`
`IPR2014-00403
`U.S. Patent No. 7,987,274
`
`accompanied by a copy of the settlement agreement between Microsoft and
`
`VirnetX, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`
`(1) Brief Explanation of Why Termination is Appropriate
`
`With respect to Microsoft, termination is appropriate because a final written
`
`decision has not been reached in this Review. Indeed, Petitioner filed its petition
`
`for inter partes review on February 4, 2014. The Board instituted this proceeding
`
`on July 31, 2014. Patent Owner filed a Patent Owner’s Response on November 3,
`
`2014, but Petitioner has not filed its Reply, which is not due until February 2,
`
`2015.
`
`Termination of this proceeding with respect to Microsoft is appropriate
`
`because, if this Motion is granted, Microsoft will not be participating as a party in
`
`this proceeding going forward, and the Board has not decided the merits of the
`
`proceeding. The Parties have settled their dispute and executed a settlement
`
`agreement to terminate this proceeding as to Microsoft, as well as the Parties’
`
`related district court litigation regarding the ’274 patent: VirnetX, Inc. and Science
`
`Applications International Corporation v. Microsoft Corporation, Case No. 6:13-
`
`cv-00351 (E.D. Tex.). The Parties expect that this district court litigation will be
`
`dismissed per the parties’ settlement agreement. For all these reasons, the Parties
`
`respectfully request termination of this proceeding with respect to Microsoft.
`
`
`
`2
`
`
`
`IPR2014-00403
`U.S. Patent No. 7,987,274
`
`(2) All parties in any pending related litigation involving the patents at
`issue
`
`Patent Owner is not involved in any other pending related litigations
`
`involving the ’274 patent.
`
`(3) Related proceedings currently before the Office
`
`Aside from this inter partes review proceeding, the ’274 patent is also the
`
`subject of the following proceeding(s) currently before the Office:
`
`Related Proceeding(s)
`IPR2014-00404
`
`Requester/Petitioner
`Microsoft Corporation
`
`IPR2014-00483
`
`Apple Inc.
`
`IPR2014-00484
`
`Apple Inc.
`
`Status
`A joint motion to
`terminate this proceeding
`with respect to Microsoft
`has been filed.
`Joined with IPR2014-
`00403. Petitioner’s
`Reply is due February 2,
`2015.
`Joined with IPR2014-
`00404. Petitioner’s
`Reply is due February 2,
`2015.
`
`
`
`
`
`(4) Current status of each such related litigation or proceeding with
`respect to each party to the litigation or proceeding
`
`Above, a status field indicates the status of each such related litigation or
`
`proceeding with respect to each party to the litigation or proceeding.
`
`
`
`3
`
`
`
`III. Settlement Agreement
`
`IPR2014-00403
`U.S. Patent No. 7,987,274
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
`
`settlement agreement is in writing, and a true and correct copy is being filed
`
`concurrently herewith as Exhibit 2044.2 The Parties are also filing concurrently
`
`herewith a joint request under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat
`
`the settlement agreement as business confidential information and keep it separate
`
`from the files of the involved patent.
`
`Respectfully submitted,
`
`
`
` /W. Karl Renner/
`W. Karl Renner
`Registration No. 41,265
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`
`Counsel for Petitioner
`Microsoft Corporation
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`
`Counsel for Patent Owner
`VirnetX, Inc.
`
`
`Dated: January 15, 2015
`
`
`The settlement agreement is being filed electronically via the Patent Review
`2
`
`Processing System (PRPS) with access to the “Parties and Board Only.”
`
`
`
`4
`
`
`
`IPR2014-00403
`U.S. Patent No. 7,987,274
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 15th day of January 2015, a copy of the
`
`foregoing Unopposed Motion to Terminate Proceeding With Respect to Microsoft
`
`Corporation was served by electronic mail upon the following:
`
`Counsel for Petitioner Microsoft Corporation:
`
`W. Karl Renner
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR38868-0003IP1@fr.com
`
`Counsel for Petitioner Apple Inc.:
`
`Jeffrey P. Kushan (jkushan@sidley.com)
`Joseph A. Micallef (jmicallef@sidley.com)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`
`Respectfully submitted,
`
` /Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.
`
`
`
`
`
`Dated: January 15, 2015
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