UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`VONAGE HOLDINGS CORP., VONAGE AMERICA, INC.,
`VONAGE MARKETING LLC, AND NETFLIX, INC.;
`Petitioner
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`________________
`
`Case IPR2014-01225
`Patent 6,009,469
`
`________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`ActiveUS 136868852v.1
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`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`VONAGE HOLDINGS CORP., VONAGE AMERICA, INC.,
`VONAGE MARKETING LLC, AND NETFLIX, INC.;
`Petitioner
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`________________
`
`Case IPR2014-01225
`Patent 6,009,469
`
`________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`ActiveUS 136868852v.1
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`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioners Vonage
`
`Holdings Corp., Vonage America, Inc., and Vonage Marketing LLC (“Vonage”)
`
`and Patent Owner Straight Path IP Group, Inc (“Straight Path”) jointly request
`
`termination of the Inter Partes Review (Case No. IPR2014-01225), which is
`
`directed to U.S. Patent No. 6,009,469 (the “’469 Patent”).
`
`Petitioner Netflix1 and Vonage filed this Petition for Inter Partes Review of
`
`the ‘469 Patent on August 1, 2014. Straight Path did not file a preliminary
`
`response. No decision on institution has been entered in this proceeding, and
`
`accordingly, no final written decision on the merits of this review proceeding has
`
`been entered. The parties have settled their dispute, and have reached agreement to
`
`terminate this Inter Partes Review.
`
`The parties’ Settlement Agreement has been made in writing, and a true
`
`copy of same is attached hereto as Exhibit 10302. The parties desire that the
`
`Settlement Agreement 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 Petitioner Netflix, Inc. has already filed a Joint Motion to Terminate Proceedings
`on September 19, 2014 (Paper 8).
`2 The Settlement Agreement is being filed electronically via the Patent Review
`Processing System (PRPS) as “Parties and Board Only.”
`
`ActiveUS 136868852v.1
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`
`
`Vonage filed four related Petitions for Inter Partes Review on August 1,
`
`2014. Those proceedings are IPR2014-01223, relating to U.S. Patent No.
`
`6,513,066; IPR2014-01224, relating to U.S. Patent No. 6,701,365; IPR2014-01234,
`
`relating to U.S. Patent No. 6,131,121; and IPR2014-01241, relating to U.S. Patent
`
`No. 6,108,704. Vonage and the Patent Owner are concurrently and jointly
`
`requesting termination of those proceedings.
`
`1. Reasons Why Termination is Appropriate.
`
`Termination is proper under 35 U.S.C. § 317(a), because the parties are
`
`jointly requesting termination, and the Patent Trial and Appeal Board (“PTAB”)
`
`has not yet “decided the merits of the proceeding before the request for termination
`
`is filed.” Within the context of Section 317(a), because the PTAB has not yet
`
`issued a decision instituting the trial or a final written decision, it accordingly not
`
`decided the merits of the proceeding. Therefore,
`
`the parties are entitled to
`
`terminate this proceeding under Section 317(a) upon their joint request.
`
`ActiveUS 136868852v.1
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`
`
`2. Related District Court Litigations and Status.
`
`The ‘469 Patent is the subject of the following pending litigations:
`
`Case No.
`
`Venue
`
`5-14-cv-04561 CAND
`
`3-14-cv-04312 CAND
`
`3-14-cv-04309 CAND
`
`Filing
`Date
`
`October
`13, 2014
`
`September
`24, 2014
`
`September
`24, 2014
`
`Status
`
`Pending
`
`Pending
`
`Pending
`
`IPR2014-
`01368
`
`PTAB
`
`August 22,
`2104
`
`Pending
`
`6-14-cv-00405 TXED
`
`2-14-cv-00502 NJD
`
`1-13-cv-01366 VAED
`
`3-13-cv-00504 VAED
`
`1-13-cv-01100 VAED
`
`1-13-cv-00932 VAED
`
`May 2,
`2014
`
`January 24,
`2014
`
`November
`4, 2013
`
`August 2,
`2013
`
`August 2,
`2013
`
`August 1,
`2013
`
`Terminated
`
`Terminated
`
`Terminated
`
`Terminated
`
`Terminated
`
`Terminated
`
`Case Name
`Amazon.com, Inc. v.
`Straight Path IP
`Group, Inc.
`Straight Path IP
`Group, Inc. v. Cisco
`Systems, Inc.
`Straight Path IP
`Group, Inc. v. Avaya,
`Inc.
`Petition for Inter
`Partes Review by
`Samsung Electronics
`Co., Ltd.
`Straight Path IP
`Group, Inc. v. Netflix,
`Inc.
`Straight Path IP
`Group, Inc. v. Vonage
`Holdings Corp. et al
`Straight Path IP
`Group, Inc. v. Vonage
`Holdings Corp. et al
`Straight Path IP
`Group, Inc. v.
`Vocalocity, Inc.
`Straight Path IP
`Group, Inc. v.
`Vocalocity, Inc.
`Straight Path IP
`Group, Inc. v.
`Bandwidth.com, Inc.
`
`ActiveUS 136868852v.1
`
`
`
`Straight Path IP
`Group, Inc. v.
`Telesphere Networks
`Ltd.
`Innovative
`Communications
`Technologies, Inc. v.
`ooVoo, LLC
`Innovative
`Communications
`Technologies, Inc. v.
`Vivox, Inc.
`Innovative
`Communications
`Technologies, Inc. v.
`Stalker Software, Inc.,
`etc.
`Net2phone, Inc. v.
`Ebay, Inc. et al.
`Net2phone, Inc. v.
`Ebay, Inc. et al.
`
`1-13-cv-00937 VAED
`
`August 1,
`2013
`
`Terminated
`
`2-12-cv-00008 VAED
`
`January 4,
`2012
`
`Terminated
`
`2-12-cv-00007 VAED
`
`January 4,
`2012
`
`Terminated
`
`2-12-cv-00009 VAED
`
`4-10-cv-04090 ARWD
`
`2-06-cv-02469 NJD
`
`January 4,
`2012
`June 23,
`2010
`June 1,
`2006
`
`Terminated
`
`Terminated
`
`Terminated
`
`3. Future Participation by the Parties.
`
`Pursuant to the Settlement Agreement, Petitioner Vonage will not bring or
`
`assist with any action challenging the validity of the Licensed Patents. It is unclear
`
`how these proceedings could properly proceed if they are not terminated by this
`
`joint motion.
`
`ActiveUS 136868852v.1
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`
`
`Respectfully submitted,
`
`/s/ Thomas J. McWilliams
`Thomas J. McWilliams
`Edward F. Behm, Jr.
`BARNES & THORNBURG, LLP
`1000 N. West Street, Suite 1500
`Wilmington, DE 19801
`Telephone: (302) 300-3434
`Facsimile: (302) 300-3456
`
`Attorneys for Patent Owner
`
`/s/ Grant K. Rowan
`Mr. Grant K. Rowan
`Grant.rowan@wilmerhale.com
`Mr. Victor F. Souto
`Vic.souto@wilmrehale.com
`Wilmer Hale Pickering Hale and
`Dorr, LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`
`Attorneys for Petitioner Vonage
`
`Dated: October 22, 2014
`
`Dated: October 22, 2014
`
`ActiveUS 136868852v.1
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`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
`
`The undersigned hereby certifies that a copy of the foregoing
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`and its exhibit was served on October 22, 2014, by filing this document though the
`Patent Review Processing System as well as delivering a copy via electronic mail
`directed to the attorneys of record for the Petitioner at the following address:
`
`Mr. Grant K. Rowan
`Grant.rowan@wilmerhale.com
`Mr. Victor F. Souto
`Vic.souto@wilmrehale.com
`Wilmer Hale Pickering Hale and Dorr, LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`202 663 6011
`
`Attorneys for Petitioners, Vonage Holdings Corp., Vonage America, Inc.,
`Vonage Marketing LLC
`
`/Thomas J. McWilliams/
`
`ActiveUS 136868852v.1
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`
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