`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`KYOCERA COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
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`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2015-00406
`Patent 7,365,871
`_______________
`
`
`
`
`
`JOINT MOTION TO TERMINATE
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`
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Kyocera
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`Communications, Inc. (“Kyocera”) and Patent Owner e-Watch Corporation and e-
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`Watch, Inc. (“e-Watch”) jointly move to terminate the present inter partes review
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`proceeding, in light of the parties’ resolution of their dispute relating to U.S. Patent
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`No. 7,365,871 (“the ’871 patent”).
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`Termination with respect to Petitioner Kyocera and Patent Owner e-Watch is
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`appropriate in the instant proceeding because the dispute between the parties has
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`been resolved, and further, the parties have agreed to terminate this inter partes
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`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 1016. 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 request the agreement be
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`treated as business confidential information, be kept separate from the file of the
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`involved patents, and be made available only to Federal Government agencies on
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`written or to any person on a showing of good cause pursuant to 35 U.S.C. §
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`317(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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`
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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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`This proceeding is still in its early stages. Indeed, there has been no
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`institution decision yet. 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 or other factors militate against termination of this proceeding. In the
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`interest of judicial economy and reducing costs, both Patent Owner and Petitioner
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`believe this inter partes review should be terminated.
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`Although the patent-at-issue in this inter partes review proceeding has been
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`asserted against certain Defendants in civil litigation, none of these Defendants
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`have sought to join this inter partes review proceeding. The status of all district
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`court cases involving U.S. Patent No. 7,365,871 is presented below.
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`
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`Judicial Matter
`e-Watch, Inc. and e-Watch
`Corporation v. Apple, Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. Blackberry
`Limited and Blackberry
`Corporation
`e-Watch, Inc. and e-Watch
`Corporation v. HTC
`Corporation and HTC
`America, Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. Huawei
`Technologies Co., Ltd. and
`Huawei Technologies USA,
`Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. Kyocera
`Communications, 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
`Mobilecomm U.S.A.
`e-Watch, Inc. and e-Watch
`Corporation v. Nokia
`Corporation and Nokia, Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. Samsung
`Electronics Co., Ltd. and
`Samsung Telecommunications
`America, Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. Sharp
`Corporation and Sharp
`Electronics Corporation
`e-Watch, Inc. and e-Watch
`Corporation v. Sony
`Corporation, Sony Mobile
`Communications AB, and
`Sony Mobile Communications
`(USA), Inc.
`e-Watch, Inc. and e-Watch
`Corporation v. ZTE
`Corporation, ZTE (USA), Inc.,
`and ZTE Solutions, Inc.
`
`Court
`E.D. Tex.
`
`Filed
`Status
`12/09/13 Pending
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`Cause No.
`13-01061
`
`E.D. Tex.
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`12/13/13 Terminated 13-01078
`
`E.D. Tex.
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`12/13/13 Pending
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`13-01063
`
`E.D. Tex.
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`12/13/13 Pending
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`13-01076
`
`E.D. Tex.
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`12/09/13 Pending
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`13-01077
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`E.D. Tex.
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`12/13/13 Pending
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`13-01064
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`E.D. Tex.
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`12/13/13 Terminated 13-01075
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`E.D. Tex.
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`12/13/13 Pending
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`13-01062
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`E.D. Tex.
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`12/13/13 Terminated 13-01074
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`E.D. Tex.
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`12/13/13 Pending
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`13-01073
`
`E.D. Tex.
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`12/13/13 Pending
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`13-01071
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`
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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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`Dated: June 30, 2015
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`Respectfully submitted,
`
`/s/ Robert C. Curfiss
`Robert C. Curfiss
`Registration No. 26,540
`bob@curfiss.com
`19826 Sundance Drive
`Humble, TX 77346
`T: (832) 573-1442
`F: (832) 644-6152
`Lead Counsel for Patent Owner
`
`David O. Simmons (Reg. No. 43,124)
`dsimmons1@sbcglobal.net
`IVC Patent Agency
`P.O. Box 26584
`Austin, TX 78755
`T: (512) 345-9767
`F: (512) 680-6105
`Back-Up Counsel for Patent Owner
`
`/s/ David L. Witcoff
`David L. Witcoff, Reg. No. 31,443
`dlwitcoff@jonesday.com
`Richard J. Johnson, Reg. No. 54,200
`jjohnson@jonesday.com
`Matthew W. Johnson, Reg. No. 59,108
`mwjohnson@jonesday.com
`JONES DAY
`77 West Wacker
`Chicago, Illinois 60601
`T: (312) 782-3939
`F: (312) 782-8585
`
`
`
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 30th day of June 2015, a true and correct copy of
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`the foregoing JOINT MOTION TO TERMINATE was served by electronic mail
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`upon counsel of record for Petitioner Kyocera Communications, Inc.:
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`
`
`
`
`
`
`/s/ Robert C. Curfiss
`Robert C. Curfiss
`Lead Counsel for Patent Owner
`Registration No. 26,540