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`Paper No.
`Filed: December 19, 2014
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`Joint Motion to Terminate Proceeding
`IPR2014-00610
`U.S. Patent No. 7,490,151
`
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`Filed on behalf of Microsoft Corporation and VirnetX, Inc.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICROSOFT CORPORATION
`Petitioner
`v.
`VIRNETX, INC.
`Patent Owner
`_____________
`
`Case IPR2014-00610
`U.S. Patent No. 7,490,151
`_____________
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`JOINT MOTION TO TERMINATE PROCEEDING
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`
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`I. Precise Relief Requested
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`IPR2014-00610
`U.S. Patent No. 7,490,151
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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. 7,490,151 (“the ’151 patent”) be terminated based on a
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`settlement between Petitioner and Patent Owner (“the Parties”).
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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 a conference call between the parties on December 19, 2014.
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`IPR2013-00428, Paper No. 56 provides guidance as to the content of a motion to
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`terminate. There, the Board indicates that a joint motion, such as this one, should
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`(1) include a brief explanation as to why termination is appropriate; (2) identify all
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`parties in any related litigation involving the patents at issue; (3) identify any
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`related proceedings currently before the Office, and (4) discuss specifically the
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`current status of each such related litigation or proceeding with respect to each
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`party to the litigation or proceeding. Id. at 2. This motion satisfies each of the
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`above requirements and is accompanied by a copy of the Parties’ settlement
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`agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
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`1
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`(1) Brief Explanation of Why Termination is Appropriate
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`IPR2014-00610
`U.S. Patent No. 7,490,151
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`Termination is appropriate because a final written decision has not been
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`reached in this Review. Indeed, Petitioner filed its petition for inter partes review
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`on April 10, 2014. The Board instituted this proceeding on October 15, 2014.
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`Patent Owner has not filed a Patent Owner’s Response, and one is not due until
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`March 15, 2015.
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`Termination of this proceeding is appropriate because, if this Motion is
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`granted, Microsoft will not be participating as a party in this proceeding going
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`forward, and the Board has not decided the merits of the proceeding. The Parties
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`have settled their dispute and executed a settlement agreement to terminate this
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`proceeding, as well as the Parties’ related district court litigation regarding the ’151
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`patent: VirnetX, Inc. and Science Applications International Corporation v.
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`Microsoft Corporation, Case No. 6:13-cv-00351 (E.D. Tex.). The Parties expect
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`that this district court litigation will be dismissed per the parties’ settlement
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`agreement. For all these reasons, the Parties respectfully request termination of
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`this proceeding.
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`2
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`IPR2014-00610
`U.S. Patent No. 7,490,151
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`(2) All parties in any pending related litigation involving the patents at
`issue
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`Patent Owner, but not Petitioner, is also involved in several other pending
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`related litigations involving the ’151 patent. These related litigations, and their
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`current status with respect to the litigating parties, are as follows:
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`Related Case(s)
`VirnetX Inc. and Science
`Applications International
`Corporation v. Cisco
`Systems, et al., Case No.
`6:10-cv-00417 (E.D. Tex.)
`
`Defendants
`Cisco Systems, Inc., Apple
`Inc., Aastra USA, Inc.,
`Aastra Technologies Ltd.,
`NEC Corp., and NEC
`Corp. of America1
`
`
`Status
`The district court entered
`judgment in favor of
`VirnetX against Apple.
`On September 16, 2014,
`the Federal Circuit
`affirmed-in-part,
`reversed-in-part,
`vacated-in-part, and
`remanded for further
`proceedings in the
`district court (No. 2013-
`1489). The Federal
`Circuit denied VirnetX’s
`petition for rehearing on
`December 16, 2014.
`
`
`1 NEC and Aastra have entered into a license agreement with VirnetX and have
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`been dismissed from this case. The Cisco portion of this case has concluded with a
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`final judgment. The only remaining defendant in this case is Apple.
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`
`
`3
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`
`
`IPR2014-00610
`U.S. Patent No. 7,490,151
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`
`Status
`Consolidated with
`VirnetX Inc. and Science
`Applications
`International
`Corporation v. Apple
`Inc., Case No. 6:12-cv-
`00855 (E.D. Tex.).
`Trial currently scheduled
`for October 13, 2015.
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`The district court severed
`VirnetX’s request for an
`ongoing royalty rate in
`Case No. 6:10-cv-00417
`and granted an ongoing
`royalty. Apple appealed
`to the Federal Circuit
`(No. 2014-1395), which
`stayed the appeal
`pending a mandate in
`Appeal No. 2013-1489.
`
`Defendants
`Apple Inc.
`
`Apple Inc.
`
`
`Apple Inc.
`
`Related Case(s)
`VirnetX Inc. and Science
`Applications International
`Corporation v. Apple Inc.,
`Case No. 6:11-cv-00563
`(E.D. Tex.)
`
`
`VirnetX Inc. and Science
`Applications International
`Corporation v. Apple Inc.,
`Case No. 6:12-cv-00855
`(E.D. Tex.)
`
`VirnetX Inc. and Science
`Applications International
`Corporation v. Apple Inc.,
`Case No. 6:13-cv-00211
`(E.D. Tex.)
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`4
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`(3) Related proceedings currently before the Office
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`IPR2014-00610
`U.S. Patent No. 7,490,151
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`Aside from this inter partes review proceeding, the ’151 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)
`Control No. 95/001,697
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`Requester/Petitioner
`Apple Inc.
`
`Control No. 95/001,714
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`Cisco Systems, Inc.
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`IPR2015-00187
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`Apple Inc.
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`Status
`Merged with control no.
`95/001,714. Awaiting
`Examiner action after
`non-final office action.
`Merged with control no.
`95/001,697. Awaiting
`Examiner action after
`non-final office action.
`Petition and motion for
`joinder filed on October
`30. Patent Owner’s
`Preliminary Response is
`due January 16, 2015.
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`
`
`
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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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`III. Settlement Agreement
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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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`
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`5
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`
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`IPR2014-00610
`U.S. Patent No. 7,490,151
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`concurrently herewith as Exhibit 2036.2 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: December 19, 2014
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`The settlement agreement is being filed electronically via the Patent Review
`2
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`Processing System (PRPS) with access to the “Parties and Board Only.”
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`6
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`IPR2014-00610
`U.S. Patent No. 7,490,151
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 19th day of December 2014, a copy of the
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`foregoing Joint Motion to Terminate Proceeding was served by electronic mail
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`upon the following:
`
`W. Karl Renner
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR38868-0006IP1@fr.com
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`Counsel for Petitioner Microsoft Corporation
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`
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`Dated: December 19, 2014
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`Respectfully submitted,
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` /Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.
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