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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC.,
`Petitioner
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`
`v.
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`
`____________
`
`Case IPR2014-01034
`Patent No. 5,894,506
`____________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`
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`Case IPR2014-001034
`Patent No. 5,894,506
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`
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`
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`Joint Motion to Terminate Proceeding
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`Pursuant to 35 U.S.C. § 317(a), Apple Inc. (“Apple” or “Petitioner”) and
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`Mobile Telecommunications Technologies, LLC (“Patent Owner”) (jointly, the
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`“Parties”) jointly request termination of IPR2014-01034, which is directed to U.S.
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`Patent No. 5,894,506 (the “’506 Patent”).
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`On June 27, 2014, Petitioner filed a Petition for Inter Partes Review
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`(“Petition”) before the United States Patent Trial and Appeal Board. Patent
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`Owner’s preliminary response was filed on October 24, 2014. On January 22,
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`2015, the United States Patent and Trademark Office (“USPTO”) issued a
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`Decision to Institute inter partes review of claim 19 of the ’506 Patent. Paper 9.
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`Patent Owner has not filed a response, and one is not due (by stipulation of
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`Petitioner and Patent Owner, filed herewith) until August 21, 2015. No final
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`written decision on the merits of this inter partes review proceeding has been
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`entered. The Parties have settled their dispute, and have reached agreement to
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`terminate this inter partes review.
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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
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`Fed.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 dated April 21, 2015. IPR2013-00428, Paper
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`No. 56 provides guidance as to the content of a motion to terminate. There, the
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`Board indicates that a joint motion, such as this one, should (1) include a brief
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`1
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`Case IPR2014-001034
`Patent No. 5,894,506
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`explanation as to why termination is appropriate; (2) identify all parties in any
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`Joint Motion to Terminate Proceeding
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`related litigation involving the patents at issue, and the status of each; and (3)
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`identify any related proceedings currently before the Office. IPR2013-00428,
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`Paper No. 56 at 2. This Motion satisfies each of the above requirements.
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`Indeed, the Parties have entered into a Settlement Agreement, and a true
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`copy of the same is attached hereto as Exhibit 2006, as required by 35 U.S.C. §
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`317(b) and 37 C.F.R. § 42.74(b).1 The Parties desire that the Settlement
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`Agreement (Exhibit 2006) be maintained as business confidential information
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`under 37 C.F.R. §42.74(c) and a separate joint request to that effect is being filed
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`on even date herewith.
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`1. Reasons Why Termination is Appropriate.
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`Under 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.” With respect to Apple,
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`termination is appropriate because a final written decision has not been reached in
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`this Review. Indeed, Patent Owner has not yet filed its Response, nor has Apple
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`1 The Settlement Agreement is being filed electronically via the Patent Review
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`Processing System (PRPS) as “Parties and Board Only.”
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`2
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`Case IPR2014-001034
`Patent No. 5,894,506
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`filed responsive papers. Termination of this proceeding with respect to Apple is
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`Joint Motion to Terminate Proceeding
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`further appropriate because, if this Motion is granted, Apple will not be
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`participating as a party in this proceeding going forward, despite the filing of this
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`Joint Motion to Terminate prior to a Board decision on the merits of the
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`proceeding. To this point, the Parties have settled their dispute and executed the
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`earlier-referenced Settlement Agreement to terminate this proceeding as to Apple,
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`as well as the Parties’ related district court litigation. The Parties expect that this
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`district court litigation will be dismissed per the Parties’ Settlement Agreement.
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`For all these reasons, the Parties respectfully request termination of this
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`proceeding with respect to Apple.
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`Moreover, Petitioner, Apple, does not oppose Patent Owner in seeking
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`termination of this inter partes review proceeding altogether.
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`Because § 317(a) indicates that the USPTO is not required to terminate an
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`inter partes review when no petitioner remains in the proceeding, Patent Owner
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`provides comments as to why termination with respect to Patent Owner is proper
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`in Patent Owner’s Explanation as to Why Termination Is Appropriate, attached
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`hereto as Exhibit 2007.
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`3
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`Case IPR2014-001034
`Patent No. 5,894,506
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`Joint Motion to Terminate Proceeding
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`2. All parties in any pending related litigation involving the patents at
`issue, and current status of each such related litigation.
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`
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`Petitioner is not involved in any other pending related litigations involving
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`the ’506 Patent. Other parties involved in litigations related to the ’506 Patent are
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`identified in the table that follows.
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`Case Name
`Mobile
`Telecommunications
`Technologies, LLP v.
`BlackBerry
`Corporpation
`Mobile
`Telecommunications
`Technologies, LLP v
`LG Electronics
`MobileComm USA,
`Inc.
`Mobile
`Telecommunications
`Technologies, LLP v
`AT&T, Inc. and
`AT&T Mobility, Inc.
`
`Case No.
`3:12cv946
`
`Court
`NDTX
`Dallas
`
`Defendants
`BlackBerry
`Corp.
`
`Status
`Ongoing; trial
`scheduled for
`November 9,
`2015.
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`2:13cv947-
`JRG-RSP
`
`EDTX
`Marshall
`
`LG
`Electronics
`MobileComm
`USA, Inc.
`
`Ongoing; trial
`set for
`September 14,
`2015.
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`2:14cv897-
`JRG-RSP
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`EDTX
`Marshall
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`AT&T, Inc.
`and AT&T
`Mobility, Inc.
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`
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`Ongoing;
`scheduling
`conference
`held March
`20, 2015.
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`3. Related proceedings currently before the Office and Status.
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`Aside from this inter partes review proceeding, the ’506 Patent is also the
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`subject of the following proceeding(s) currently before the Office:
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`4
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`Case IPR2014-001034
`Patent No. 5,894,506
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`Joint Motion to Terminate Proceeding
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`Related Proceeding Requestor/Petitioner
`IPR2014-01033
`Apple Inc.
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`Status
`Not instituted by the Board
`Per Paper 9 of IPR2014-01033
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`Pursuant to the Settlement Agreement, Petitioner will not further participate
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`in these proceedings even if the Petition is not terminated pursuant to this joint
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`motion. Patent Owner reserves its right to participate (including the right to seek
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`exclusion of some or all the testimony of Petitioner’s declarant), if necessary.
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`Patent Owner notes, however, that in the absence of Petitioner, it is unclear how
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`these proceedings could properly proceed.
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`Dated: April 22, 2015
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`Dated: April 22, 2015
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`Respectfully submitted,
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`
`
`/John R. Kasha/
`John R. Kasha (Reg. No. 53,100)
`Lead Counsel for Patent Owner
`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
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`
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`/W. Karl Renner/
`W. Karl Renner (Reg. 41,265)
`Lead Counsel for Apple
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel. 202-783-5070
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`5
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. § 1.550(f), a copy of Joint Motion to
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`Terminate Proceeding Pursuant to 35 U.S.C. § 317 and the supporting exhibits
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`filed by the Mobile Telecommunications Technologies, LLC on April 22, 2015
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`was duly served via electronic mail upon IPR39521-0003IP2@fr.com - counsel of
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`record for Apple Inc. (“Petitioner”).
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`The parties have agreed to electronic service in this matter.
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`Respectfully submitted,
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`/John R. Kasha/
`John R. Kasha (Reg. No. 53,100)
`Lead Counsel for Patent Owner
`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
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`Dated: April 22, 2015
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