UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Iron Dome LLC
`
`Petitioner
`
`V.
`
`E-WATCH, INC.
`
`Patent Owner
`
`Case IPR2014-00439
`
`Patent 7,365,871
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`PURSUANT TO 35 U.S.C. §317
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Iron Dome LLC
`
`Petitioner
`
`V.
`
`E-WATCH, INC.
`
`Patent Owner
`
`Case IPR2014-00439
`
`Patent 7,365,871
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`PURSUANT TO 35 U.S.C. §317
`
`
`
`Pursuant to 35 U.S.C. § 3 l7(a), Petitioner Iron Dome LLC
`
`("Petitioner") and Patent Owner e—Watch, Inc. ("Patent Owner") jointly
`
`request termination of IPR2014-00439, which is directed to Patent
`
`7,365,871 (the " '871 Patent").
`
`On August 4, 2014, the United States Patent and Trademark
`
`Office ("USPTO") issued a Decision to Institute inter partes review of
`
`certain claims of the '871 Patent.
`
`IPR2014—00439, Paper 16. No final
`
`written decision on the merits of this inter partes review proceeding
`
`has been entered and no oral hearing has been held.
`
`The parties have settled their dispute and have reached
`
`agreement to terminate this inter partes review. The parties’
`
`Agreement has been made in writing.
`
`The parties desire that the Agreement be maintained as business
`
`confidential information under 37 C.F.R. §42.74(c). A separate joint
`
`request to that effect has been filed. A true and accurate copy of the
`
`Agreement has been filed electronically via the Patent Review
`
`Processing System (PRPS) as "Parties and Board Only."
`
`1. Reasons Why Termination is Appropriate.
`
`Under 35 U.S.C. § 3 I 7(a), "[a]n inter partes review instituted
`
`under this chapter shall be terminated with respect to any petitioner
`
`IQ
`
`
`
`upon the joint request of the petitioner and the patent owner, unless the
`
`Office has decided the merits of the proceeding before the request for
`
`termination is filed." Because the parties are jointly requesting
`
`termination and the Office has not yet "decided the merits of the
`
`proceeding before the request for termination is filed," the USPTO is
`
`required to terminate the inter partes review with respect to Petitioner.
`
`Within the context of Section 317(a), a decision on the merits must be
`
`something beyond a decision instituting trial. Otherwise, the quoted
`
`phrase would be rendered meaningless because every "inter partes
`
`review instituted under this chapter" originates with a decision
`
`instituting trial. Here, no decision on the merits has been made.
`
`Accordingly, the USPTO is required to terminate this inter partes
`
`review with respect to Petitioner based on this joint request.
`
`Petitioner supports Patent Owner's position that this inter partes
`
`review proceeding should be terminated with respect to Patent Owner.
`
`Patent Owner e-Watch and Petitioner Iron Dome LLC have
`
`conferred and have mutually determined that it is in the best interest of
`
`both parties to terminate the subject case IPR2014-00439, which
`
`involves U.S. Patent No. 7,365,871 (‘871 patent).
`
`In the interest ofjudicial economy and in the interest of
`
`
`
`minimizing the costs associated with this matter, it is appropriate that
`
`the subject IPR case be terminated without further action by the Board.
`
`No decision has been rendered by the board at the present time
`
`and no oral hearing has been conducted. No interest of either party
`
`will be served by continuing the IPR case since there are no longer any
`
`adverse positions to be resolved.
`
`Although the patent-at-issue in this IPR proceeding (i.e. the ‘871
`
`patent) has been asserted against certain Defendants in civil litigation,
`
`none of these Defendants have sought to join this IPR proceeding.
`
`In
`
`addition, none of these Defendants have cited the same ground of
`
`rejection as cited in this IPR proceeding in their IPR petitions related
`
`to the ‘871 patent.
`
`2.
`
`Related District Court Litigations and
`Status Involving the '87] Patent.
`
`e-Watch, Inc. and e-
`Watch Corporation v.
`
`
`
`
`13-0106]
`
`Pending
`
`
`
`e-Watch, Inc. and e-
`
`
` Pending
`13-01078
`
`
`
`
`
`13-01063
`
`13-01076
`
`.
`
`.
`
`.
`
`.
`
`echnologies
`
`
`
`
` Huawei
`echnologies
`
`I3-01077
`
`.
`
`.
`
`o
`
`Pendmg
`
`
`
`e-Watch, Inc. and e-
`Watch Corporation v.
`HTC Corporation and
`HTC America, Inc.
`
`
`
`
`
`e-Watch, Inc. and
`
`
`
`
`
`echnologies Co.,
`Ltd. and Huawei
`
`
`
`echnologies
`
`13-01064
`
`
`
`
`
`- orporation
`nd Nokia.
`Inc.
`
`'
`
`'
`
`'
`
`.
`
`.
`
`'
`
`erminated
`
`I3-01075
`
`okia, Inc.
`
`
`
`13 01062
`
`Samsung
`Electronics
`
`elecommunicat
`
`-ions America,
`
`e—Watch Inc
`
`13 01074
`
`Watch
`
`Corporation v.
`
`13 01073
`
`.
`
`.
`
`Sony Mobile
`Communications
`
`13-01071
`
`Solutions, Inc
`
`
`
`3.
`
`Future Participation by the Parties.
`
`Pursuant to the Agreement, Petitioner will not further participate
`
`in these proceedings even if Patent Owner is not terminated pursuant
`
`to this joint motion. Patent Owner reserves its right to participate, if
`
`necessary. Patent Owner notes, however, that in the absence of
`
`Petitioner, it is unclear how these proceedings could properly proceed.
`
`Respectfully submitted,
`
`3;26,540)
`
`
`
`19826 Sundance
`
`Lead Counsel for e-Watch, Inc.
`
`Dated: { Zfi ‘Z02;
`
`Humble, TX 77346
`Tel: 832-5 73- 1 442
`
`Fax: 832-644-6152
`
`Email: bob Ez)curfiss.com
`
`Lead Counsel for Iron Dome LLC
`
`Dated:
`
`9424’ (wig
`
`3 % W
`
`
`
`Steven Yu (Reg. No. 58,776)
`PO. Box 10034
`
`Gaithersburg, MD 20898
`Tel: 202.262.0426
`
`Email: syu@ironc|ome.ccnm
`
`CERTIFICATE OF SERVICE
`to 1?Sugdgrggggcllfemfies mi: 3 COPY Ofthe f0Feg01ng Motion to Terminate Proceeding pursuant
`Process-hp
`t Wazszerlue on February 26, 2915 by fihng same via the Patent Review
`g ys em an
`e lvermg same by e-mail to lead counsel for Petitioner at
` , per agreement by/
`
`Dated: q:E‘.lA_Z Q 82> 3;
`
`By: ss (Reg . No. 26540)
`
`Lead Counsel or Patent Owner
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