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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
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`
`
`
`
`
`
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`SONY MOBILE COMMUNICATIONS (USA) INC.,
`Petitioner
`
`
`
`v.
`
`
`
`E-WATCH, INC. AND E-WATCH CORPORATION
`Patent Owner
`
`
`
`
`
`
`
`
`Case IPR2015-00401
`Patent No. 7,643,168
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`Case IPR2015-00401
`Patent No. 7,643,168
`
`
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Sony Mobile
`
`Communications (USA) Inc. (“Sony”) and Patent Owner e-Watch, Inc. (“e-
`
`Watch”) jointly move to terminate the present inter partes review proceeding with
`
`respect to both the Petitioner and Patent Owner, in light of the parties’ resolution of
`
`their dispute relating to U.S. Patent No. 7,643,168 (“the ’168 patent”).
`
`Termination with respect to Petitioner Sony and Patent Owner e-Watch is
`
`appropriate in the instant proceeding because the dispute between the parties has
`
`been resolved, and further, the parties have agreed to terminate this inter partes
`
`review.
`
`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 1029. The parties
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`further request, pursuant to 37 C.F.R. § 42.74(c), that the agreement be treated as
`
`confidential business information and kept separate from the files of the involved
`
`patent. The parties are filing, concurrently herewith, a motion to seal pursuant to
`
`35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c).
`
`The applicable statute, provides that an inter partes review proceeding “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.” 35 U.S.C. § 317(a) (emphasis added).
`
`This proceeding is still in its early stages. e-Watch’s Patent Owner Response is not
`
`
`
`- 2 -
`
`

`
`Case IPR2015-00401
`Patent No. 7,643,168
`
`due until September 21, 2015. Moreover, strong public policy considerations favor
`
`settlement between parties to an inter partes review proceeding. See Office Trial
`
`Practice Guide, Fed. Reg., Vol. 77, No. 157 at 48768 (Aug. 14, 2012). No public
`
`interest factors militate against termination of this proceeding with respect to both
`
`Petitioner and Patent Owner.
`
`The status of all district court cases involving U.S. Patent No. 7,643,168 is
`
`presented below.
`
`
`
`- 3 -
`
`

`
`Case IPR2015-00401
`Patent No. 7,643,168
`
`Court
`E.D. Tex.
`
`Filed
`Status
`12/09/13 Pending
`
`Cause No.
`13-01061
`
`E.D. Tex.
`
`12/13/13 Terminated 13-01078
`
`E.D. Tex.
`
`12/13/13 Pending
`
`13-01063
`
`E.D. Tex.
`
`12/13/13 Pending
`
`13-01076
`
`E.D. Tex.
`
`12/09/13 Terminated 13-01077
`
`E.D. Tex.
`
`12/13/13 Pending
`
`13-01064
`
`E.D. Tex.
`
`12/13/13 Terminated 13-01075
`
`E.D. Tex.
`
`12/13/13 Pending
`
`13-01062
`
`Judicial Matter
`e-Watch, Inc. and e-Watch
`Corporation v. Apple, Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. Blackberry
`Limited and Blackberry Corpo-
`ration
`e-Watch, Inc. and e-Watch
`Corporation v. HTC Corpora-
`tion and HTC America, Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. Huawei Tech-
`nologies Co., Ltd. and Huawei
`Technologies USA, Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. Kyocera Com-
`munications, Inc. and Kyocera
`International, Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. LG Electronics,
`Inc., LG Electronics U.S.A,
`Inc., and LG Electronics Mo-
`bilecomm U.S.A.
`e-Watch, Inc. and e-Watch
`Corporation v. Nokia Corpora-
`tion and Nokia, Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. Samsung Elec-
`tronics Co., Ltd. and Samsung
`Telecommunications America,
`Inc.
`
`
`
`
`
`- 4 -
`
`

`
`Case IPR2015-00401
`Patent No. 7,643,168
`
`Court
`E.D. Tex.
`
`Cause No.
`Filed
`Status
`12/13/13 Terminated 13-01074
`
`E.D. Tex.
`
`12/13/13 Pending
`
`13-01073
`
`E.D. Tex.
`
`12/13/13 Pending
`
`13-01071
`
`Judicial Matter
`e-Watch, Inc. and e-Watch
`Corporation v. Sharp Corpora-
`tion and Sharp Electronics
`Corporation
`e-Watch, Inc. and e-Watch
`Corporation v. Sony Corpora-
`tion, Sony Mobile Communi-
`cations AB, and Sony Mobile
`Communications (USA), Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. ZTE Corpora-
`tion, ZTE (USA), Inc., and
`ZTE Solutions, Inc.
`
`
`For the foregoing reasons, the parties jointly and respectfully request that the
`
`instant proceeding be terminated with respect to both Petitioner and Patent Owner.
`
`Date: August 17, 2015
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Robert C. Curfiss/
`Robert C. Curfiss
`Reg. No. 26,540
`19826 Sundance Drive
`Humble, Texas 77346
`Lead Counsel for Patent Owner
`
`
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /James V. Mahon/
`James V. Mahon
`Andrews Kurth, LLP
`4505 Emperor Blvd., Ste. 330
`Durham, NC 27703
`jamesmahon@andrewskurth.com
`Telephone: (919) 864-7210
`Facsimile:
`(202) 974-9551
`
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`- 5 -
`
`

`
`
`
`
`
`
`
`
`
`Case IPR2015-00401
`Patent No. 7,643,168
`
`
`
`- 6 -
`
`

`
`Case IPR2015-00401
`Patent No. 7,643,168
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned JOINT MOTION
`
`TO TERMINATE PURSUANT TO 35 U.S.C § 317 AND 37 C.F.R. § 42.74 and
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`accompanying Exhibit 1029 were served in their entireties on August 17, 2015 on
`
`the following parties via electronic mail:
`
`
`James V. Mahon
`Andrews Kurth, LLP
`4505 Emperor Blvd., Ste. 330
`Durham, NC 27703
`jamesmahon@andrewskurth.com
`Telephone: (919) 864-7210
`Facsimile:
`(202) 974-9551
`
`
`
`
`
`
`
`
`
`
`
`/Robert C. Curfiss/
`Robert C. Curfiss
`Reg. No. 26,540
`19826 Sundance Drive
`Humble, Texas 77346
`Lead Counsel for Patent Owner
`
`
`- 7 -

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