UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
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`WAVEMARKET, INC. D/B/A/ LOCATION LABS
`
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`
`Patent Owner
`
`______________
`
`Case IPR2014-00920
`U.S. Patent 6,771,970
`____________
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. §§ 317, 327 AND 37 C.F.R. §§ 42.72, 42.74
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`WAVEMARKET, INC. D/B/A/ LOCATION LABS
`
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`
`Patent Owner
`
`______________
`
`Case IPR2014-00920
`U.S. Patent 6,771,970
`____________
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. §§ 317, 327 AND 37 C.F.R. §§ 42.72, 42.74
`
`
`
`Pursuant to 35 U.S.C. §§ 317(a) and 327(a), as well as 37 C.F.R. §§ 42.72
`
`and 42.74, and as authorized by the Board’s e-mail dated May 12, 2015, Petitioner
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`(Wavemarket Inc. d/b/a Location Labs) and Patent Owner (LocatioNet Systems
`
`Ltd.) (collectively, “the Parties”) provide notice they have executed a settlement
`
`agreement, and now jointly request termination of the Inter Partes Review Case
`
`No. IPR2014-00920 involving U.S. Patent No. 6,771,970 (“the ’970 Patent”). The
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`Parties have settled their dispute, and an agreement has been reached to terminate
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`this inter partes review. After the requested termination of this proceeding,
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`dismissal of Petitioner from district court action (Callwave Communications, LLC
`
`v. Wavemarket, Inc., N.D. Cal., Civil Case No. 4:14-mc-80112) and dismissal of
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`the carrier defendants AT&T Mobility, LLC, Sprint Spectrum L.P., Sprint
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`Communications Company L.P., and T-Mobile USA Inc. ("Carrier Defendants")
`
`from related district court actions (Callwave Communications, LLC v. AT&T
`
`Mobility LLC, et al., D. Del., Civil Case No. 1:12-cv-1701, Callwave
`
`Communications, LLC v. Sprint Spectrum L.P., Sprint Communications Company
`
`L.P., et al., D. Del., Civil Case No. 1:12-cv-1702, and Callwave Communications,
`
`LLC v. T-Mobile USA, Inc., et al., D. Del., Civil Case No. 1:12-cv-1703), no other
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`disputes between the Parties will remain.
`
`As required by statute, the Parties are filing concurrently, as a separate
`
`submission, a true copy of the written settlement agreement as Exhibit 1121, as
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`2
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`
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`well as true copies of a collateral agreement associated with settlement as Exhibit
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`1122, along with a joint request to treat Exhibits 1121-1122 as business
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`confidential information and to keep them separate from the file of the ’970 Patent.
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`The Parties jointly request that the Board terminate this inter partes review
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`as to both parties, without rendering a final written decision.
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`II.
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`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`Termination of this proceeding as to both parties, without rendering a final
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`written decision, is appropriate because (i) the trial is at a sufficiently early stage
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`and the record is incomplete; (ii) the parties have settled their disputes in this
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`proceeding and the related litigation; (iii) the parties to this inter partes review
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`agree that it should be terminated; and (iv) public policy strongly favors settlement.
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`A.
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`Termination With Respect to Petitioner
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`Pursuant to 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Because the Parties are
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`jointly requesting termination, and the Office has not yet “decided the merits of the
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`proceeding before the request for termination is filed,” termination of this
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`proceeding with respect to the Petitioner is proper.
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`3
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`
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`B.
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`Termination With Respect to Patent Owner
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`Upon termination of this proceeding regarding Petitioner, no petitioner shall
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`remain. Termination of this proceeding with respect to the Patent Owner is
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`supported by the Petitioner and is appropriate for at least the following reasons.
`
`1. Incomplete Record
`
`The record in this proceeding is incomplete, and the Board has not yet
`
`decided the merits of this proceeding. Petitioner has not filed a reply brief or reply
`
`declarations to address the arguments and evidence from the Patent Owner’s
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`Response filed March 3, 2015, Patent Owner has not yet deposed any reply
`
`witnesses and has not yet filed observations on cross-examination (DUE DATE 4),
`
`neither party has filed (or responded to) a motion to exclude (DUE DATES 4–6),
`
`and no oral hearing has yet been requested or held (DUE DATE 7). The only
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`outstanding motions before the Board are a fully briefed Motion to Seal and for
`
`Entry of Protective Order and a fully briefed Motion for Additional Discovery.
`
`The Board has terminated, without final written decision, other inter partes
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`review proceedings in which a joint motion for termination was filed following a
`
`patent owner’s response and prior to a petitioner’s reply. See, e.g., Panasonic
`
`Corp. v. Optical Devices, LLC, IPR2014-00303 , Paper 23 (Feb. 10, 2015);
`
`Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-00057, Paper 36
`
`(Oct. 28, 2014); Sealed Air Corporation v. Pregis Innovative Packaging, Inc.,
`
`4
`
`
`
`IPR2013-00554, Paper 47 (Sept. 12, 2014); and Xerox Corp. v. RR Donnelley &
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`Sons Co., IPR2013-00529, Paper 21 (August 29, 2014). And in cases after a
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`petitioner’s reply. See Apex Medical Corp. v. ResMed Limited, IPR2013-00512,
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`Paper 39 (Sept. 3, 2014).
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`2. No Further Participation by Petitioner
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`Petitioner informs the Board that Petitioner will file no reply papers in this
`
`proceeding, will not attend any oral hearing in this proceeding, will oppose no
`
`motions to exclude in this proceeding, and will not further participate further in
`
`this proceeding before the Board. Petitioner supports the termination of this inter
`
`partes review regarding Patent Owner.
`
`Because the record is incomplete and will not be further developed,
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`termination with respect to all parties is favored. Patent Owner notes that absent a
`
`Petitioner, it is unclear how these proceedings could properly proceed. Under
`
`these circumstances, there is every reason to honor the Parties’ wishes to terminate
`
`as to both parties without final written decision.
`
`3. Maintaining this Inter Parties Review Would
`Discourage Settlements and Waste Judicial
`Resources
`
`Congress and federal courts have expressed a strong interest in encouraging
`
`settlement of disputes. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
`
`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
`
`5
`
`
`
`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986)
`
`(“The law favors settlement of cases.”), cert denied, 479 U.S. 950 (1986); and 35
`
`U.S.C. § 317(a). Public policy strongly favors allowing parties to settle. The
`
`USPTO’s Office Patent Trial Practice Guide expressly states regarding settlement,
`
`“There are strong public policy reasons to favor settlement between the parties to a
`
`proceeding. The Board will be available to facilitate settlement discussions, and
`
`where appropriate, may require a settlement discussion as part of the proceeding.
`
`The Board expects that a proceeding will terminate after the filing of a settlement
`
`agreement, unless the Board has already decided the merits of the proceeding.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
`
`Maintaining this review after the Parties’ settlement would be contrary to
`
`public policy and would discourage future settlements by removing a significant
`
`motivation for settlement, by eliminating litigation risk by resolving the parties’
`
`disputes and by ending the pending proceedings between them. One reason courts
`
`endorse settlement is preservation of judicial resources. Maintaining this
`
`proceeding after the Parties have settled their disputes would waste, rather than
`
`conserve, judicial resources of the USPTO and the Federal Circuit. In addition,
`
`Patent Owner will be prejudiced if this proceeding is not terminated as requested,
`
`regarding additional attorneys’ fees and costs that would be incurred in connection
`
`with the proceeding.
`
`6
`
`
`
`4. Status of Litigations Related to ’970 Patent
`
`Patent Owner provides the following status of litigations involving or related
`
`to the ’970 Patent, after the filing of respective Stipulations to Dismiss, which
`
`pursuant to the settlement agreement are to be filed by May 28, 2015, and their
`
`entry by the respective district courts.
`
`1. CallWave Communications v. AT&T Mobility, LLC and Google Inc., D.
`Del., Civil Case No. 1:12-cv-1701.
`
`Google Inc. will remain a defendant after settlement.
`
`2. CallWave Communications v. Sprint Spectrum L.P., Sprint Spectrum
`Communications Company L.P., and Google Inc., D. Del., Civil Case No.
`1:12-cv-1702.
`
`Google Inc. will remain a defendant after settlement.
`
`3. CallWave Communications v. T-Mobile USA, Inc. and Google Inc., D.
`Del., Civil Case No. 1:12-cv-1703.
`
`Google Inc. will remain a defendant after settlement.
`
`4. CallWave Communications v. Verizon Services Corp. et al., D. Del., Civil
`Case No. 1:12-cv-1704.
`
`Google Inc., Verizon Services Corp. and Cellco Partnership d/b/a as
`Verizon Wireless will remain defendants after settlement.
`
`5. CallWave Communications v. AT&T Mobility, LLC, et al., D. Del., Civil
`Case No. 1:12-cv-1788.
`
`Blackberry Ltd. and Blackberry Corp. will remain defendants after
`settlement.
`
`6. Callwave Communications, LLC v. Wavemarket, Inc., N.D. Cal., Civil
`Case No. 4:14-mc-80112.
`
`7
`
`
`
`Action to be dismissed, with prejudice.
`
`7. Wavemarket, Inc. d/b/a Location Labs v. CallWave Communications,
`IPR2014-00199 (Claim 18 of the ’970 patent).
`
`Final Written Decision issued on May 7, 2015.
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`Patent Owner represents that there are no other litigations that involve the
`
`’970 Patent.
`
`Although some of the above-listed proceedings are pending between the
`
`Patent Owner and third parties, this fact does not outweigh the reasons strongly
`
`favoring termination as outlined above. Patent Owner further notes that none of
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`the third parties listed above elected to file IPR petitions within the one-year
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`statutory period provided by 35 U.S.C. § 315(b), and chose not to file motions for
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`joinder with the instant proceeding within the required one month period following
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`the institution decision as provided by 37 C.F.R. § 42.122(b).
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`III.
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`Conclusion
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`The parties respectfully request termination of this proceeding in its entirety
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`as to all Parties. Any reasonable weighing of the issues/factors discussed heavily
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`favors termination of the entire proceeding on all Parties. By agreement, Petitioner
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`files this Motion on behalf of both Parties.
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`8
`
`
`
`Respectfully submitted,
`
`DENTONS US LLP
`
`/Scott W. Cummings/
`Scott Cummings
`
`PEPPER HAMILTON LLP
`
`/Thomas Engellenner/
`Thomas Engellenner
`
`Mark L. Hogge, Reg. No. 31,622
`Email: mark.hogge@dentons.com
`
`Scott W. Cummings, Reg. No. 41,567
`Email: scott.cummings@dentons.com
`
`1301 K St., NW
`Suite 600, East Tower
`Washington, DC 20005-3364
`Telephone: 202-408-6400
`Facsimile: 202-408-6399
`
`Attorneys for Petitioners
`
`Thomas Engellenner, Reg. No. 28,711
`Reza Mollaaghababa, Reg. No. 43,810
`Andy Chan, Reg. No. 56,893
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 0211 0
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`chana@pepperlaw.com
`
`Attorneys for Patent Owners
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. § 42.6(e), the undersigned certifies that on the 13th day of
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`May 2015, a complete and entire copy of this JOINT MOTION TO TERMINATE
`
`PURSUANT TO 35 U.S.C. §§ 317, 327 AND 37 C.F.R. §§ 42.72, 42.74 along
`
`with Exhibits 1121 and 1122, were served via electronic mail on counsel for the
`
`Patent Owner in IPR2014-00920, as follows:
`
`Thomas Engellenner, Reg. No. 28,711
`Reza Mollaaghababa, Reg. No. 43,810
`Andy Chan, Reg. No. 56,893
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 0211 0
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`chana@pepperlaw.com
`
`Dated:
`
`May 13, 2015
`
`Respectfully submitted,
`
`/Nona Durham/
`Nona Durham
`
`
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