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`Paper No.
`Filed: January 15, 2015
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`Filed on behalf of Microsoft Corporation and VirnetX, Inc.
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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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`MICROSOFT CORPORATION and APPLE INC.
`Petitioners
`v.
`VIRNETX, INC.
`Patent Owner
`_____________
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`Case IPR2014-00404
`U.S. Patent No. 7,987,2741
`_____________
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`UNOPPOSED MOTION TO TERMINATE PROCEEDING WITH
`RESPECT TO MICROSOFT CORPORATION
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`1
`Case IPR2014-00484 has been joined with this case.
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`Precise Relief Requested
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`IPR2014-00404
`U.S. Patent No. 7,987,274
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`Pursuant
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`to 35 U.S.C. § 317(a), Petitioner Microsoft Corporation
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`(“Microsoft” or “Petitioner”) and Patent Owner VirnetX, Inc. (“Patent Owner” or
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`“VirnetX”) jointly request that this inter partes review proceeding (“this Review”)
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`involving U.S. Patent No. 7,987,274 (“the ’274 patent”) be terminated with respect
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`to Microsoft based on a settlement between Petitioner Microsoft and Patent Owner
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`(“the Parties”). Microsoft and VirnetX conferred with Petitioner Apple Inc. and
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`Apple does not oppose termination with respect to Microsoft.
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`II. Reasons for Granting the Motion
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
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`instant motion in email dated January 13, 2015. IPR2013-00428, Paper No. 56
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`provides guidance as to the content of a motion to terminate. There, the Board
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`indicates that a joint motion, such as this one, should (1) include a brief
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`explanation as to why termination is appropriate; (2) identify all parties in any
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`related litigation involving the patents at issue; (3) identify any related proceedings
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`currently before the Office, and (4) discuss specifically the current status of each
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`such related litigation or proceeding with respect to each party to the litigation or
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`proceeding. Id. at 2. This motion satisfies each of the above requirements and is
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`1
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`IPR2014-00404
`U.S. Patent No. 7,987,274
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`accompanied by a copy of the settlement agreement between Microsoft and
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`VirnetX, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
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`(1) Brief Explanation of Why Termination is Appropriate
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`With respect to Microsoft, termination is appropriate because a final written
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`decision has not been reached in this Review. Indeed, Petitioner filed its petition
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`for inter partes review on February 4, 2014. The Board instituted this proceeding
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`on July 31, 2014. Patent Owner filed a Patent Owner’s Response on November 3,
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`2014, but Petitioner has not filed its Reply, which is not due until February 2,
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`2015.
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`Termination of this proceeding with respect to Microsoft is appropriate
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`because, if this Motion is granted, Microsoft will not be participating as a party in
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`this proceeding going forward, and the Board has not decided the merits of the
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`proceeding. The Parties have settled their dispute and executed a settlement
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`agreement to terminate this proceeding as to Microsoft, as well as the Parties’
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`related district court litigation regarding the ’274 patent: VirnetX, Inc. and Science
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`Applications International Corporation v. Microsoft Corporation, Case No. 6:13-
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`cv-00351 (E.D. Tex.). The Parties expect that this district court litigation will be
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`dismissed per the parties’ settlement agreement. For all these reasons, the Parties
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`respectfully request termination of this proceeding with respect to Microsoft.
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`2
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`IPR2014-00404
`U.S. Patent No. 7,987,274
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`(2) All parties in any pending related litigation involving the patents at
`issue
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`Patent Owner is not involved in any other pending related litigations
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`involving the ’274 patent.
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`(3) Related proceedings currently before the Office
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`Aside from this inter partes review proceeding, the ’274 patent is also the
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`subject of the following proceeding(s) currently before the Office:
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`Related Proceeding(s)
`IPR2014-00403
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`Requester/Petitioner
`Microsoft Corporation
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`IPR2014-00483
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`Apple Inc.
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`IPR2014-00484
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`Apple Inc.
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`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.
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`(4) Current status of each such related litigation or proceeding with
`respect to each party to the litigation or proceeding
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`Above, a status field indicates the status of each such related litigation or
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`proceeding with respect to each party to the litigation or proceeding.
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`3
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`III. Settlement Agreement
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`IPR2014-00404
`U.S. Patent No. 7,987,274
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`Pursuant to 35 U.S.C. § 317(b) and 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
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`concurrently herewith as Exhibit 2044.2 The Parties are also filing concurrently
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`herewith a joint request under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat
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`the settlement agreement as business confidential information and keep it separate
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`from the files of the involved patent.
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`Respectfully submitted,
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` /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
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`Counsel for Petitioner
`Microsoft Corporation
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` /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
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`Counsel for Patent Owner
`VirnetX, Inc.
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`Dated: January 15, 2015
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`The settlement agreement is being filed electronically via the Patent Review
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`Processing System (PRPS) with access to the “Parties and Board Only.”
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`4
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`IPR2014-00404
`U.S. Patent No. 7,987,274
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 15th day of January 2015, a copy of the
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`foregoing Unopposed Motion to Terminate Proceeding With Respect to Microsoft
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`Corporation was served by electronic mail upon the following:
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`Counsel for Petitioner Microsoft Corporation:
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`W. Karl Renner
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR38868-0003IP2@fr.com
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`Counsel for Petitioner Apple Inc.:
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`Jeffrey P. Kushan (jkushan@sidley.com)
`Joseph A. Micallef (jmicallef@sidley.com)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`Dated: January 15, 2015
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`Respectfully submitted,
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` /Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.
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