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UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`KYOCERA COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2015-00407
`Patent 7,643,168
`_______________
`
`
`
`
`
`JOINT MOTION TO TERMINATE
`
`

`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Kyocera
`
`Communications, Inc. (“Kyocera”) and Patent Owner e-Watch Corporation and e-
`
`Watch, Inc. (“e-Watch”) jointly move to terminate the present inter partes review
`
`proceeding, 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 Kyocera 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
`
`herewith, a true copy of their written agreement as Exhibit 1016. The parties
`
`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 request the agreement be
`
`treated as business confidential information, be kept separate from the file of the
`
`involved patents, and be made available only to Federal Government agencies on
`
`written or to any person on a showing of good cause pursuant to 35 U.S.C. §
`
`317(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. Indeed, there has been no
`
`institution decision yet. 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 or other factors militate against termination of this proceeding. In the
`
`interest of judicial economy and reducing costs, both Patent Owner and Petitioner
`
`believe this inter partes review should be terminated.
`
`Although the patent-at-issue in this inter partes review proceeding has been
`
`asserted against certain Defendants in civil litigation, none of these Defendants
`
`have sought to join this inter partes review proceeding. The status of all district
`
`court cases involving U.S. Patent No. 7,643,168 is presented below.
`
`

`
`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
`
`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 Pending
`
`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
`
`E.D. Tex.
`
`12/13/13 Terminated 13-01074
`
`E.D. Tex.
`
`12/13/13 Pending
`
`13-01073
`
`E.D. Tex.
`
`12/13/13 Pending
`
`13-01071
`
`

`
`
`
`For the foregoing reasons, the parties jointly and respectfully request that the
`
`instant proceeding be terminated.
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`Dated: June 30, 2015
`
`
`
`
`
`
`
`
`
`
`
`

`
`mwjohnson@jonesday.com
`JONES DAY
`77 West Wacker
`Chicago, Illinois 60601
`T: (312) 782-3939
`F: (312) 782-8585
`Counsel for Petitioner
`
`
`
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 30th day of June 2015, a true and correct copy of
`
`the foregoing JOINT MOTION TO TERMINATE was served by electronic mail
`
`upon counsel of record for Petitioner Kyocera Communications, Inc.:
`
`/s/ Robert C. Curfiss
`Robert C. Curfiss
`Lead Counsel for Patent Owner
`Registration No. 26,540

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