`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2015-00345
`U.S. Patent No. 8,205,237
`
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`UNDER 35 U.S.C. § 317(a)
`
`
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, and the
`
`Board’s authorizing order, Petitioner Google LLC and Patent Owner Network-1
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`Technologies, Inc., jointly request termination of this proceeding with respect to
`
`claims 25-27, 29, and 30 (the “Remaining Claims”).
`
`The parties have resolved their dispute as described in the Joint Stipulation
`
`by the parties filed herewith as Exhibit 1022. Other than as indicated in the Joint
`
`Stipulation, there are no written or oral agreements or understandings, including
`
`any collateral agreements, between the parties, including but not limited to
`
`
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`licenses, covenants not to sue, confidentiality agreements, or other agreements of
`
`any kind, that are made in connection with, or in contemplation of, the termination
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`of this proceeding. See, e.g., General Growth Properties, Inc. et al. v. Peschke,
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`IPR2013-00400, Paper 35 at 2-3 (Apr. 9, 2014).
`
`Termination of this proceeding is proper under 35 U.S.C. § 317(a). Pursuant
`
`to the decision of the U.S. Court of Appeals for the Federal Circuit in Google LLC
`
`v. Network-1 Techs., Inc., 726 F. App’x 779, 786 (Fed. Cir. 2018), the decision of
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`the Board in this proceeding has been vacated with respect to the Remaining
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`Claims and, with respect to those claims, has been “remanded to the Board for
`
`consideration of patentability based upon the [Federal Circuit’s] claim
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`construction.” In light of the Federal Circuit’s vacatur, the USPTO has not, with
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`respect to the Remaining Claims, “decided the merits of the proceeding before
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`[this] request for termination [was] filed.” 35 U.S.C. § 317(a). Therefore, this
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`request for termination is proper. The only related proceedings in the USPTO are
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`IPR2015-00343, IPR2015-00347, and IPR2015-00348, which involve U.S. Patent
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`Nos. 8,640,179, 8,010,988, and 8,656,441, respectively. The parties are
`
`concurrently requesting termination of those three proceedings with respect to their
`
`remanded, remaining claims as well. Thus, other than proceedings the parties seek
`
`to terminate, there are no related inter partes review proceedings or other
`
`proceedings before the USPTO involving the ‘237 patent. Accordingly, the parties
`
`
`
`2
`
`
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`respectfully request termination of this proceeding. For the avoidance of doubt,
`
`the United States Patent and Trademark Office issued an Inter Partes Review
`
`Certificate on February 16, 2018 cancelling claims 9-16, 23, and 24 of U.S. Patent
`
`No. 8,205,237 (the “Cancelled Claims”), and the parties agree that this joint
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`motion shall have no effect on the legal status of those Cancelled Claims.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with the filing to Deposit Account 501710 (Customer ID No. 27160).
`
`
`Dated: December 21, 2018
`
`Respectfully submitted,
`
`
`/David M. Krinsky/
`David M. Krinsky (Reg. No. 72,339)
`Christopher A. Suarez (Reg. No.
`72,553)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`(202) 434-5000
`
`Attorneys for Petitioner
`
`/Charles R. Macedo/
`Charles R. Macedo (Reg. No. 32,781)
`AMSTER, ROTHSTEIN &
`EBENSTEIN LLP
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`
`Attorneys for Patent Owner
`
`
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above-captioned Joint Motion to
`
`Terminate Proceedings Under 35 U.S.C. § 317(a), along with Exhibit 1022, was
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`served on December 21, 2018 by filing this document through the Patent Review
`
`Processing System as well as delivering a copy via electronic mail upon the
`
`following attorneys of record for the Petitioner and Patent Owner:
`
`Charles R. Macedo
`Reg. No. 32,781
`
`
`
`
`
`
`
`
`
`
`AMSTER, ROTHSTEIN
`& EBENSTEIN LLP
`90 Park Avenue
`
`New York, NY 10016
`
`cmacedo@arelaw.com
`
`
`
`
`
`
`
`
`
`
`Dated: December 21, 2018
`
`
`
`
`
`
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`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`David M. Krinsky
`Reg. No. 72,338
`Christopher A. Suarez
`Reg. No. 72,553
`
`
`
`
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, NW
`Washington, D.C. 20005
`
`dkrinsky@wc.com
`csuarez@wc.com
`
`Respectfully submitted,
`
`/David M. Krinsky/
`David M. Krinsky (Reg. No. 72,339)
`Christopher A. Suarez (Reg. No. 72,553)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`(202) 434-5000
`
`Attorneys for Petitioner
`
`
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