`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.,
`Petitioner
`
`
`v.
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`
`____________
`
`Case IPR2014-01034
`Patent No. 5,894,506
`____________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`Case IPR2014-001034
`Patent No. 5,894,506
`
`
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`Pursuant to 35 U.S.C. § 317(a), Apple Inc. (“Apple” or “Petitioner”) and
`
`Mobile Telecommunications Technologies, LLC (“Patent Owner”) (jointly, the
`
`“Parties”) jointly request termination of IPR2014-01034, which is directed to U.S.
`
`Patent No. 5,894,506 (the “’506 Patent”).
`
`On June 27, 2014, Petitioner filed a Petition for Inter Partes Review
`
`(“Petition”) before the United States Patent Trial and Appeal Board. Patent
`
`Owner’s preliminary response was filed on October 24, 2014. On January 22,
`
`2015, the United States Patent and Trademark Office (“USPTO”) issued a
`
`Decision to Institute inter partes review of claim 19 of the ’506 Patent. Paper 9.
`
`Patent Owner has not filed a response, and one is not due (by stipulation of
`
`Petitioner and Patent Owner, filed herewith) until August 21, 2015. No final
`
`written decision on the merits of this inter partes review proceeding has been
`
`entered. The Parties have settled their dispute, and have reached agreement to
`
`terminate this inter partes review.
`
`Generally, the Board expects that a proceeding will terminate after the filing
`
`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77
`
`Fed.Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
`
`instant Motion in a conference call dated April 21, 2015. IPR2013-00428, Paper
`
`No. 56 provides guidance as to the content of a motion to terminate. There, the
`
`Board indicates that a joint motion, such as this one, should (1) include a brief
`
`1
`
`
`
`Case IPR2014-001034
`Patent No. 5,894,506
`
`explanation as to why termination is appropriate; (2) identify all parties in any
`
`Joint Motion to Terminate Proceeding
`
`
`
`
`
`related litigation involving the patents at issue, and the status of each; and (3)
`
`identify any related proceedings currently before the Office. IPR2013-00428,
`
`Paper No. 56 at 2. This Motion satisfies each of the above requirements.
`
`Indeed, the Parties have entered into a Settlement Agreement, and a true
`
`copy of the same is attached hereto as Exhibit 2006, as required by 35 U.S.C. §
`
`317(b) and 37 C.F.R. § 42.74(b).1 The Parties desire that the Settlement
`
`Agreement (Exhibit 2006) be maintained as business confidential information
`
`under 37 C.F.R. §42.74(c) and a separate joint request to that effect is being filed
`
`on even date herewith.
`
`1. Reasons Why Termination is Appropriate.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`
`chapter shall be terminated with respect to any petitioner 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.” With respect to Apple,
`
`termination is appropriate because a final written decision has not been reached in
`
`this Review. Indeed, Patent Owner has not yet filed its Response, nor has Apple
`
`
`1 The Settlement Agreement is being filed electronically via the Patent Review
`
`Processing System (PRPS) as “Parties and Board Only.”
`
`2
`
`
`
`Case IPR2014-001034
`Patent No. 5,894,506
`
`filed responsive papers. Termination of this proceeding with respect to Apple is
`
`Joint Motion to Terminate Proceeding
`
`
`
`
`
`further appropriate because, if this Motion is granted, Apple will not be
`
`participating as a party in this proceeding going forward, despite the filing of this
`
`Joint Motion to Terminate prior to a Board decision on the merits of the
`
`proceeding. To this point, the Parties have settled their dispute and executed the
`
`earlier-referenced Settlement Agreement to terminate this proceeding as to Apple,
`
`as well as the Parties’ related district court litigation. The Parties expect that this
`
`district court litigation will be dismissed per the Parties’ Settlement Agreement.
`
`For all these reasons, the Parties respectfully request termination of this
`
`proceeding with respect to Apple.
`
`Moreover, Petitioner, Apple, does not oppose Patent Owner in seeking
`
`termination of this inter partes review proceeding altogether.
`
`Because § 317(a) indicates that the USPTO is not required to terminate an
`
`inter partes review when no petitioner remains in the proceeding, Patent Owner
`
`provides comments as to why termination with respect to Patent Owner is proper
`
`in Patent Owner’s Explanation as to Why Termination Is Appropriate, attached
`
`hereto as Exhibit 2007.
`
`3
`
`
`
`Case IPR2014-001034
`Patent No. 5,894,506
`
`
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`2. All parties in any pending related litigation involving the patents at
`issue, and current status of each such related litigation.
`
`
`
`Petitioner is not involved in any other pending related litigations involving
`
`the ’506 Patent. Other parties involved in litigations related to the ’506 Patent are
`
`identified in the table that follows.
`
`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.
`
`2:13cv947-
`JRG-RSP
`
`EDTX
`Marshall
`
`LG
`Electronics
`MobileComm
`USA, Inc.
`
`Ongoing; trial
`set for
`September 14,
`2015.
`
`2:14cv897-
`JRG-RSP
`
`EDTX
`Marshall
`
`AT&T, Inc.
`and AT&T
`Mobility, Inc.
`
`
`
`Ongoing;
`scheduling
`conference
`held March
`20, 2015.
`
`3. Related proceedings currently before the Office and Status.
`
`Aside from this inter partes review proceeding, the ’506 Patent is also the
`
`subject of the following proceeding(s) currently before the Office:
`
`4
`
`
`
`Case IPR2014-001034
`Patent No. 5,894,506
`
`
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`Related Proceeding Requestor/Petitioner
`IPR2014-01033
`Apple Inc.
`
`
`Status
`Not instituted by the Board
`Per Paper 9 of IPR2014-01033
`
`Pursuant to the Settlement Agreement, Petitioner will not further participate
`
`in these proceedings even if the Petition is not terminated pursuant to this joint
`
`motion. Patent Owner reserves its right to participate (including the right to seek
`
`exclusion of some or all the testimony of Petitioner’s declarant), if necessary.
`
`Patent Owner notes, however, that in the absence of Petitioner, it is unclear how
`
`these proceedings could properly proceed.
`
`
`
`
`
`
`
`
`
`Dated: April 22, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: April 22, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/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
`
`
`
`
`
`
`
`/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
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 1.550(f), a copy of Joint Motion to
`
`Terminate Proceeding Pursuant to 35 U.S.C. § 317 and the supporting exhibits
`
`filed by the Mobile Telecommunications Technologies, LLC on April 22, 2015
`
`was duly served via electronic mail upon IPR39521-0003IP2@fr.com - counsel of
`
`record for Apple Inc. (“Petitioner”).
`
`The parties have agreed to electronic service in this matter.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`/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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: April 22, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`