IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDIATEK INC. and MEDIATEK USA, INC.
`Petitioners
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`v.
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`BANDSPEED, INC.
`Patent Owner
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`Case IPR2015-00314
`Patent No. 7,477,624
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`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C § 317 AND 37 C.F.R. § 42.74
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDIATEK INC. and MEDIATEK USA, INC.
`Petitioners
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`v.
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`BANDSPEED, INC.
`Patent Owner
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`Case IPR2015-00314
`Patent No. 7,477,624
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`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C § 317 AND 37 C.F.R. § 42.74
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`Case IPR2015-00314
`Patent No. 7,477,624
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner MediaTek Inc.
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`and MediaTek USA, Inc. (“MediaTek”) and Patent Owner Bandspeed, Inc.
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`(“Bandspeed”) jointly move to terminate the present inter partes review
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`proceeding with respect to both Petitioner MediaTek and Patent Owner Bandspeed,
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`in light of the parties’ resolution of their dispute relating to U.S. Patent No.
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`7,477,624 (“the ’624 patent”).
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`Termination with respect to Petitioner MediaTek and Patent Owner
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`Bandspeed is appropriate in the instant proceeding because the dispute between the
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`parties has been resolved, and further, the parties have agreed to terminate this
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`inter partes review.
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`As required by 35 U.S.C. § 317(b), the parties are filing, concurrently
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`herewith, a true copy of their written agreement as Exhibit 1018. The parties
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`further request, pursuant to 37 C.F.R. § 42.74(c), that the agreement be treated as
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`confidential business information and kept separate from the files of the involved
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`patent. The parties are filing, concurrently herewith, a motion to seal pursuant to
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`35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c).
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`The applicable statute, provides that an inter partes review proceeding “shall
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`be terminated with respect to any petitioner upon the joint request of the petitioner
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`and the patent owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added).
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`- 2 -
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`Case IPR2015-00314
`Patent No. 7,477,624
`The proceeding is still in its early stages. Patent Owner’s response is not due until
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`September 15, 2015. Moreover, strong public policy considerations favor
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`settlement between parties to an inter partes review proceeding. See Office Trial
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`Practice Guide, Fed. Reg., Vol. 77, No. 157 at 48768 (Aug. 14, 2012). No public
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`interest factors militate against termination of this proceeding.
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`The status of all district court cases involving U.S. Patent No. 7,477,624 is
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`presented below.
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`Judicial Matter
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`Court
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`Filed:
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`Ended
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`Docket No.
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`Bandspeed, Inc. v. Broadcom Corpora-
`tion
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`Bandspeed, Inc. v. Marvell Semiconduc-
`tor, Inc.
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`W.D. Tex. 05/09/14
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`08/29/14
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`1:14-CV-00433
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`W.D. Tex 05/09/14
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`05/07/15
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`1:14-CV-00434
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`Bandspeed, Inc. v. MediaTek USA, Inc. W.D. Tex 05/09/14
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`Pending
`(but ex-
`pected to
`be termi-
`nated
`soon)
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`1:14-CV-00435
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`Bandspeed, Inc. v. Qualcomm Incorpo-
`rated et al.
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`Bandspeed, Inc. v. STMicroelectronics
`N.V. et al.
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`Bandspeed, Inc. v. Texas Instruments
`Incorporated
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`W.D. Tex 05/09/14 Pending
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`1:14-CV-00436
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`W.D. Tex 05/09/14
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`04/06/15
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`1:14-CV-00437
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`W.D. Tex 05/09/14 Pending
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`1:14-CV-00438
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`For the foregoing reasons, the parties jointly and respectfully request that the
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`instant proceeding be terminated.
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`- 3 -
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`Case IPR2015-00314
`Patent No. 7,477,624
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`Respectfully submitted,
` /s/ Gregory S. Donahue
`Gregory S. Donahue, Registration No. 47,531
`DiNOVO PRICE ELLWANGER & HARDY LLP
`7000 North MoPac Expressway
`Suite 350
`Austin, Texas 78731
`(512) 539-2626
`Attorney for Patent Owner
`
`/Robert Sokohl Reg. No. 36,013/
`Lori A. Gordon, Registration No. 50,633
`Robert E. Sokohl, Registration No. 36,013
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`1100 New York Ave NW
`Washington, D.C. 20005
`(202) 371-2600
`Attorneys for Petitioners
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`Date: August 5, 2015
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`- 4 -
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`Case IPR2015-00314
`Patent No. 7,477,624
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`Appendix A - Exhibit List
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`Description
`U.S. Patent No. 7,477,624 to Gan et al., issued January 13,
`2009 (“The ’624 Patent”)
`Declaration of Dr. Zhi Ding in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,477,624, November 24,
`2014 (“Ding Decl.”)
`
`U.S. Patent No. 6,760,319 to Gerten et al., issued July 6, 2004
`(“Gerten”)
`U.S. Patent No. 6,418,317 to Cuffaro et al., issued July 9,
`2002 (“Cuffaro”)
`U.S. Patent No. 6,115,407 to Gendel et al., issued September
`5, 2000 (“Gendel”)
`U.S. Patent No. 7,280,580 to Haartsen, issued October 9,
`2007 (“Haartsen”)
`U.S. Patent No. 5,781,582 to Sage et al., issued July 14, 1998
`(“Sage”)
`Non-Final Office Action mailed January 12, 2012, Inter
`Partes Reexamination of U.S. Patent No. 7,027,418, Control
`No. 95/000648 (“Non-Final Office Action”)
`Patent Owner’s Housekeeping Amendment, filed February
`11, 2013 in Inter Partes Reexamination of U.S. Patent No.
`7,027,418, Control No. 95/000648 (“Housekeeping Amend-
`ment”)
`Patent Owner’s Comments after Action Closing Prosecution,
`filed December 3, 2013 in Inter Partes Reexamination of U.S.
`Patent No. 7,027,418, Control No. 95/000648 (“Comments
`After ACP”)
`Definition of “vote,” The American Heritage Dictionary, Sec-
`ond College Edition, Boston: Houghton Mifflin Company,
`1985; p. 1356
`Definition of “while,” The American Heritage Dictionary,
`Second College Edition, Boston: Houghton Mifflin Company,
`1985; p. 1376
`Definition of “Register,”– Microsoft Press Computer Diction-
`ary, 3rd Edition, Redmond, WA: Microsoft, 1997; p. 402
`Curriculum Vitae of Zhi Ding, Ph.D.
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`Exhibit No.
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`- 5 -
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`Case IPR2015-00314
`Patent No. 7,477,624
`U.S. Patent No. 7,027,418 to Gan et al., issued April 11, 2006
`Specification of the Bluetooth System, Version 1.0B, Decem-
`ber 1, 1999
`Release Agreement
`Settlement and Nonexclusive Patent License Agreement
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`1015
`1016
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`1017
`1018
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`- 6 -
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned JOINT MOTION
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`TO TERMINATE PURSUANT TO 35 U.S.C § 317 AND 37 C.F.R. § 42.74 and
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`accompanying Exhibit 1018 were served in their entireties on August 5, 2015 on the
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`following parties via electronic mail:
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`
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`Lori A. Gordon (Lead counsel)
`lgordon-PTAB@skgf.com
`Robert E. Sokohl
`rsokohl-PTAB@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`1100 New York Ave NW
`Washington, D.C. 20005
`
`
` DINOVO PRICE ELLWANGER & HARDY, LLP
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` /s/ Gregory S. Donahue
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`
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` Gregory S. Donahue
`Attorney for Patent Owner
`Registration No. 47,531
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`
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`Date: August 5, 2015
`
`7000 North MoPac Expressway, Ste. 350
`Austin, Texas 78731
`(512) 539-2626
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