DOCKET NO.: 0107131-00269US3
`Filed on behalf of Intel Corporation
`By: Michael A. Diener, Reg. No. 37,122
`Yung-Hoon Ha, Reg. No. 56,368
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Tel: (202) 663-6000
`Email: Michael.Diener@wilmerhale.com
`
`Yung-Hoon.Ha@wilmerhale.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`INTEL CORPORATION
`Petitioner
`
`v.
`
`Zond, LLC, Patent Owner of
`U.S. Patent No. 6,805,779 to Roman Chistyakov
`
`IPR Trial No. 2014-00765
`
`
`___________________________
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`
`JOINT MOTION TO TERMINATE PROCEEDING
` PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
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`ActiveUS 134804077v.1
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`Filed on behalf of Intel Corporation
`By: Michael A. Diener, Reg. No. 37,122
`Yung-Hoon Ha, Reg. No. 56,368
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Tel: (202) 663-6000
`Email: Michael.Diener@wilmerhale.com
`
`Yung-Hoon.Ha@wilmerhale.com
`
`
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`INTEL CORPORATION
`Petitioner
`
`v.
`
`Zond, LLC, Patent Owner of
`U.S. Patent No. 6,805,779 to Roman Chistyakov
`
`IPR Trial No. 2014-00765
`
`
`___________________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
` PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
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`ActiveUS 134804077v.1
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`Pursuant to 35 U.S.C. §317 and 37 C.F.R. § 42.72, Patent Owner Zond LLC
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`Patent No. 6,805,779
`IPR2014-00765
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`
`
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`(“Patent Owner”) and Petitioner Intel Corporation (“Petitioner”) (collectively, “the
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`Parties”) jointly request termination of Inter Partes Review No. IPR2014-00765,
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`involving claims 30-37, 39 and 40 of U.S. Patent 6,805,779.
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`The Parties have settled all of their disputes involving the following patents
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`U.S. Patents Nos. 6,805,779 B2 (the “‘779 patent”), 6,806,652 B1 (the “‘652
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`patent”), 6,853,142 B2 (the “‘142 patent”), 7,147,759 (the “‘759 patent”),
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`7,604,716 B2 (the “‘716 patent”), 7,808,184 B2 (the “‘184 patent”), and 7,811,421
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`B2 (the “‘421 patent”). More specifically, the Parties have agreed to settle and
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`dismiss their related district court litigation (1:13-cv-11570-RGS (Zond v. Intel
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`Corp.)). The Parties have also agreed to jointly request termination of this
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`proceeding and all IPRs filed by Intel for the above listed patents1.
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`Zond patent
`‘759 patent
`
`‘184 patent
`
`‘421 patent
`
`Intel IPRs relating to patent
`IPR2014-00443
`IPR2014-00444
`IPR2014-00445
`IPR2014-00446
`IPR2014-00447
`IPR2014-00455
`IPR2014-00456
`IPR2014-00468
`IPR2014-00470
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`1 The Parties are submitting a Joint Motion to Terminate Proceeding in each of the
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`IPRs filed by Intel in the above identified patents.
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`ActiveUS 134804077v.1
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`‘142 patent
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`‘716 patent
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`‘779 patent
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`‘652 patent
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`Patent No. 6,805,779
`IPR2014-00765
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`IPR2014-00473
`IPR2014-00494
`IPR2014-00495
`IPR2014-00496
`IPR2014-00497
`IPR2014-00498
`IPR2014-00520
`IPR2014-00521
`IPR2014-00522
`IPR2014-00523
`IPR2014-00598
`IPR 2014-00686
`IPR 2014-00765
`IPR 2014-00820
`IPR 2014-00913
`IPR2014-00843
`IPR2014-00923
`IPR 2014-00945
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`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ settlement agreement and any
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`collateral agreements made in contemplation of termination of the proceeding are
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`in writing, and true and correct copies of such documents are being filed as Exhibit
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`1013 in related proceeding IPR 2014-00598.
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`The Parties hereby jointly request that the settlement related agreements be
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`treated as business confidential information and be kept separate from the files of
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`the above captioned IPR pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`I.
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`Background
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`Petitioner filed several requests for Inter Partes Review, as summarized
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`above. The Board has instituted Inter Partes Review on all challenged claims of
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`ActiveUS 134804077v.1
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`the ‘759, ‘421, and ‘184 patents, and has not issued a decision on institution
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`Patent No. 6,805,779
`IPR2014-00765
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`regarding the remaining patents. Specifically, a trial was instituted in the
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`following IPRs:
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`Zond patent
`‘759 patent
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`‘184 patent
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`‘421 patent
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`
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`Intel IPRs relating to patent
`IPR2014-00443
`IPR2014-00444
`IPR2014-00445
`IPR2014-00446
`IPR2014-00447
`IPR2014-00455
`IPR2014-00456
`IPR2014-00468
`IPR2014-00470
`IPR2014-00473
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` Decision on institution has not yet been ordered for the following IPRs:
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`Zond patent
`‘142 patent
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`‘716 patent
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`‘779 patent
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`‘652 patent
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`Intel IPRs relating to patent
`IPR2014-00494
`IPR2014-00495
`IPR2014-00496
`IPR2014-00497
`IPR2014-00498
`IPR2014-00520
`IPR2014-00521
`IPR2014-00522
`IPR2014-00523
`IPR2014-00598
`IPR 2014-00686
`IPR 2014-00765
`IPR 2014-00820
`IPR 2014-00913
`IPR2014-00843
`IPR2014-00923
`IPR 2014-00945
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`ActiveUS 134804077v.1
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`Patent No. 6,805,779
`IPR2014-00765
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`On September 4, 2014, the Parties agreed to settle all of their disputes
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`involving U.S. Patent Nos. 6,805,779 B2, 6,806,652 B1, 6,853,142 B2, 7,147,759
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`B2, 7,604,716 B2, 7,808,184 B2, and 7,811,421 B2, including all litigation and
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`Patent Office proceedings related thereto.
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`On September 4, 2014, the Parties informed the Board of the settlement and
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`requested a phone conference with the Board requesting authorization to file a joint
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`motion to terminate the proceeding with respect to both the Patent Owner and the
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`Petitioner. In a conference call with the Board on September 8, 2014, the Parties
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`confirmed that settlement had been reached.
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`As more fully set forth in the Order for Conduct of the Proceedings,
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`September 9, 2014 (Paper 16 of IPR2014-00443) (“Order”), the Board authorized
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`the filing of the requested joint motion to terminate this proceeding as to both
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`parties.
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`II. Termination as to Patent Owner and Petitioner Is Appropriate
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`
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`A. The following is a brief explanation as to why termination as to the
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`Parties is appropriate which is presented by both parties.
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`
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`Termination of this IPR is appropriate as the Board has not yet “decided the
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`merits of the proceeding” on several of the proceedings noted above. See, e.g.,
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
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`For those IPRs which have been instituted, no initial conference has occurred and
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`Patent No. 6,805,779
`IPR2014-00765
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`the post-decision on institution trial process has yet to commence.
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`
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`Notably, no dispute remains between the Patent Owner and the Petitioner
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`involving U.S. Patent Nos. 6,805,779 B2, 6,806,652 B1, 6,853,142 B2, 7,147,759
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`B2, 7,604,716 B2, 7,808,184 B2, and 7,811,421 B2:
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`i.
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`the Parties have agreed to jointly request termination of all of the
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`IPRs Intel filed concerning U.S. Patent Nos. 6,805,779 B2,
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`6,806,652 B1, 6,853,142 B2, 7,147,759 B2, 7,604,716 B2,
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`7,808,184 B2, and 7,811,421 B2; and,
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`ii.
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`the litigation between the Parties involving the same patents is
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`being dismissed as part of the settlement.
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`B. The Patent Owner, for itself only, offers additional reasons as to why the
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`IPR proceedings should be terminated2:
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`Because the merits of any of the IPRs have not been determined and the
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`IPRs are therefore at a very early stage, concluding these IPR proceedings
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`promotes the Congressional goal to establish a more efficient and streamlined
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`patent system that, inter alia, limits unnecessary and counterproductive litigation
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`costs. See “Changes to Implement Inter Partes Review Proceedings, Post-Grant
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`Review Proceedings, and Transitional Program for Covered Business Method
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`2 Intel takes no position on these additional reasons.
`- 5 -
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`ActiveUS 134804077v.1
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`Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680 (Tuesday, August 14, 2012).
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`Patent No. 6,805,779
`IPR2014-00765
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`By permitting termination of IPR proceedings as to all parties upon settlement, the
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`PTAB provides certainty as to the outcome of these proceedings. Terminating IPRs
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`upon settlement fosters an environment that promotes settlements, thereby creating
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`a timely, cost-effective alternative to litigation.
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`In contrast, maintaining these proceedings in the absence of Petitioner would
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`effectively pit the Patent Owner against the Board, a scenario never intended by
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`the legislators who enacted the American Invents Act (AIA). In enacting the AIA,
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`Congress did not intend that the PTAB would step into the shoes of the Petitioner
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`or assume an ex-parte examination role. Instead, The Leahy-Smith America
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`Invents Act replaced inter partes reexamination with review proceedings and
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`entrusted such matters to the Board rather than the examining corps. Commenting
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`on this significant change to USPTO practice, Senator Kyl noted that the new
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`procedures were intended to be strictly adjudicative in nature, where “the
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`petitioner, rather than the Office, bears the burden of showing unpatentability.”
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`157 Congressional Record S1375, daily ed. March 8, 2011. As these changes were
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`taken from the Senator’s prior bill from the 110th Congress, S. 3600, he cited with
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`approval his comments in support of that prior legislation:
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`"The bill uses an oppositional model, which is favored by
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`PTO as allowing speedier adjudication of claims. Under a
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`ActiveUS 134804077v.1
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`Patent No. 6,805,779
`IPR2014-00765
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`reexam system, the burden is always on PTO to show that a
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`claim is not patentable. Every time that new information is
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`presented, PTO must reassess whether its burden has been
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`met. This model has proven unworkable in inter partes
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`reexam, in which multiple parties can present information to
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`PTO at various stages of the proceeding, and which system
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`has experienced interminable delays. Under an oppositional
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`system, by contrast, the burden is always on the petitioner to
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`show that a claim is not patentable. Both parties present their
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`evidence to the PTO, which then simply decides whether the
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`petitioner has met his burden. 154 Congressional Record
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`S9987, daily ed. Sept. 27, 2008 (emphasis added).
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`Senator Kyl’s comments make clear that the new review proceedings were
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`not intended to devolve into the prior “unworkable” system of reexamination in the
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`event no petitioner was left. The Board’s role was intended to be that of an
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`adjudicator resolving a dispute between litigants, not an examiner. See, e.g.,
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`Statement of Sen. Kyl, 157 Congressional Record S1376, daily ed. March 8, 2011
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`(“Currently, inter partes reexaminations usually last for 3 to 5 years. Because of
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`procedural reforms made by the present bill to inter partes proceedings, the Patent
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`ActiveUS 134804077v.1
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`Office is confident that it will be able to complete these proceedings within one
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`Patent No. 6,805,779
`IPR2014-00765
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`year. Among the reforms that are expected to expedite these proceedings are the
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`shift from an examinational to an adjudicative model, and the elevated threshold
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`for instituting proceedings.”) (emphasis added). In the face of a negotiated
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`settlement between the parties and the absence of any petitioner in the proceedings,
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`the Board’s role has been fully discharged and termination of the proceedings is
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`justified.
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`Should the Board decide to continue the present proceedings, the
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`Congressional goal of speedy dispute resolutions will be chilled. Faced with the
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`prospect of having to continue to defend a patent, not against a third party
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`petitioner but against the PTAB, patent owners would have little, if any, reason to
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`enter into compromises of the kind reached between the present parties. In such
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`circumstances, patent owners would still face the jeopardies and costs associated
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`with review proceedings but would be effectively prohibited from availing
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`themselves of the benefits (for example the cross-examination of witnesses upon
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`notice) of same.
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`III. Status of Related Litigation
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`
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`As noted above, the related district court action between Patent Owner and
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`Petitioner has been settled and is being dismissed.
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`IV. Treat Settlement Agreements as Business Confidential Information
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`Patent No. 6,805,779
`IPR2014-00765
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`
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`Patent Owner and Petitioner hereby request that the Settlement Agreement
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`and the License Agreement filed as Exhibit 1013 in related proceeding IPR 2014-
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`00598 be treated as business confidential information, be kept separate from the
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`file of the above captioned IPR, and be made available only to Federal
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`Government agencies on written request, or to any person on a showing of good
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`cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`V. Conclusion
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`Patent No. 6,805,779
`IPR2014-00765
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`
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`For the foregoing reasons, Patent Owner and Petitioner jointly request that
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`the Board terminate this Inter Partes Review proceeding as to both Parties, and
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`treat the settlement related agreements filed as Exhibit 1013 in related proceeding
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`IPR2014-00598 as business confidential information and keep those agreements
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`separate from the file of the above captioned IPR.
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`
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`Dated: September 12, 2014
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`Respectfully submitted,
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`By /Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Registration No.: 43635
`2216 Beacon Lane
`Falls Church, VA 22043
`571-419-7252
`Counsel for Zond LLC.
`
`By /Yung-Hoon Ha/
`Yung-Hoon Ha
`Registration No.: 56,368
`WILMER HALE LLP
`Counsel for Intel Corp.
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`ActiveUS 134804077v.1
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`Patent No. 6,805,779
`IPR2014-00765
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`It is hereby certified that on this 12 day of September, 2014, a copy of the
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`foregoing document was served via electronic mail upon the following:
`
`Dr. Gregory J. Gonsalves
`Registration No.: 43635
`2216 Beacon Lane
`Falls Church, VA 22043
`571-419-7252
`Counsel for Zond LLC.
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`Date: September 12, 2014
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`/Yung-Hoon Ha/
`Yung-Hoon Ha
`Registration No.: 56,368
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`ActiveUS 134804077v.1
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`DOCKET NO.: 0107131-00269US3
`Filed on behalf of Intel Corporation
`By: Michael A. Diener, Reg. No. 37,122
`Yung-Hoon Ha, Reg. No. 56,368
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Tel: (202) 663-6000
`Email: Michael.Diener@wilmerhale.com
`
`Yung-Hoon.Ha@wilmerhale.com
`
`
`
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`INTEL CORPORATION
`Petitioner
`
`v.
`
`Patent Owner of
`U.S. Patent No. 6,805,779 to Roman Chistyakov
`
`IPR Trial No. IPR2014-00765
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`ActiveUS 134804077v.1
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`Patent No. 6,805,779
`IPR2014-00765
`JOINT REQUEST TO KEEP PAPER SEPARATE
`AS BUSINESS CONFIDENTIAL INFORMATION
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`Concurrently with the filing of this Request, the Petitioner and Patent Owner
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`are filing a Joint Motion to Terminate this inter partes review due to a settlement
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`between the parties. A true copy of the parties’ written settlement agreement is
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`being filed concurrently as Exhibit No. 1013 in related proceeding IPR 2014-
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`00598. The settlement agreement contains business confidential information, and
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`the parties hereby request that the settlement agreement be kept as a separate paper
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`to be made available only under the provisions of 35 U.S.C § 317(b) and 37 C.F.R.
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`§ 42.74(c). In view of that request the settlement agreement has been filed in
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`related proceeding IPR 2014-00598 for access by the “Parties and Board Only.”
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`Dated: September 12, 2014
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`ActiveUS 134804077v.1
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`Respectfully submitted,
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`By /Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Registration No.: 43635
`2216 Beacon Lane
`Falls Church, VA 22043
`571-419-7252
`Counsel for Zond LLC.
`
`By /Yung-Hoon Ha/
`Yung-Hoon Ha
`Registration No.: 56,368
`WILMER HALE LLP
`Counsel for Intel Corp.
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`Patent No. 6,805,779
`IPR2014-00765
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`It is hereby certified that on this 12 day of September, 2014, a copy of the
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`foregoing document was served via electronic mail upon the following:
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`Dr. Gregory J. Gonsalves
`Registration No.: 43635
`2216 Beacon Lane
`Falls Church, VA 22043
`571-419-7252
`Counsel for Zond LLC.
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`Date: September 12, 2014
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`/Yung-Hoon Ha/
`Yung-Hoon Ha
`Registration No.: 56,368
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`ActiveUS 134804077v.1
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