UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC. AND MICROSOFT MOBILE OY
`Petitioner
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`v.
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`E-WATCH, INC.
`Patent Owner
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`Case IPR2015-00408
`Patent 7,643,168
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`JOINT MOTION TO TERMINATE WITH RESPECT TO MICROSOFT
`MOBILE OY, MICROSOFT CORPORATION, AND NOKIA INC.
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC. AND MICROSOFT MOBILE OY
`Petitioner
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`v.
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`E-WATCH, INC.
`Patent Owner
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`Case IPR2015-00408
`Patent 7,643,168
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`JOINT MOTION TO TERMINATE WITH RESPECT TO MICROSOFT
`MOBILE OY, MICROSOFT CORPORATION, AND NOKIA INC.
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`E-WATCH 2001 Confidential Settlement and License Agreement
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`EXHIBIT
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`Case IPR2015-00404
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`Case IPR2015-00404
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Petitioner
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`Microsoft Mobile OY (“MMO”) and Real Parties in Interest, Microsoft
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`Corporation and Nokia Inc. (collectively “the Microsoft/Nokia parties”) and Patent
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`Owner e-Watch, Inc. (“e-Watch”) jointly request termination of the Inter Partes
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`Review (IPR) of U.S. Patent No. 7,643,168, Case No. IPR2015-00408 with respect
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`to the Microsoft/Nokia parties. The Microsoft/Nokia parties and e-Watch are
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`collectively referred to herein as “Parties” and individually as a “Party.” The
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`Parties agree that each Party shall bear its own fees and expenses.
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`Termination of this proceeding as to the Microsoft/Nokia parties is
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`appropriate, as the Parties have agreed to settle their dispute. Moreover, this
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`review is in its early stages. MMO jointly filed its petition with LG Electronics,
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`Inc. (“LGE”) for IPR on December 10, 2014, which included the designation of the
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`Microsoft/Nokia parties as real parties in interest. e-Watch has yet to file a
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`Preliminary Patent Owner Response and the IPR has yet to be instituted. As a
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`result, e-Watch has not filed any substantive papers or declarations.
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`The applicable statute, 35 U.S.C. § 317(a), provides that an inter partes
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`review proceeding “shall be terminated with respect to any petitioner upon the
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`joint request of the petitioner and the patent owner, unless the Office has decided
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`Case IPR2015-00404
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`the merits of the proceeding before the request for termination is filed.” (emphasis
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`added).
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`In this case, the inter partes review has not been instituted. Thus, the Office
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`has not yet reached any decision on the merits of the proceeding. Moreover, strong
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`public policy considerations favor settlement between parties to an inter partes
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`review proceeding, see Patent Office Trial Practice Guide, Fed. Register, Vol. 77,
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`No. 157 at 48768 (Aug. 14, 2012), and no public interest or other factors militate
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`against termination of this proceeding with respect to the Microsoft/Nokia parties.
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`The Microsoft/Nokia parties and e-Watch have agreed to settle their dispute
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`and have reached an agreement to terminate this review as to the Microsoft/Nokia
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`parties. The Settlement Agreement between e-Watch and the Microsoft/Nokia
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`parties has been made in writing and is filed separately as Exhibit 2001. The
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`Settlement Agreement is being filed concurrently with a Joint Request to Treat
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`Settlement Agreement as Business Confidential Information Under 35 U.S.C. §
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`317 (b) and 37 C.F.R. § 42.74 (c). There are no collateral agreements referred to in
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`the Parties’ Settlement Agreement. As stated in 35 U.S.C. § 317(a), because the
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`Microsoft/Nokia parties and e-Watch jointly request this termination, it is
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`understood that no estoppel under 35 U.S.C. § 315(e) shall attach to the
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`Microsoft/Nokia parties. As provided in 37 C.F.R. § 42.73(d)(3), because no
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`Case IPR2015-00404
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`adverse judgment has been entered, it is also understood that, as to e-Watch, no
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`estoppel under 37 C.F.R. § 42.73(d)(3) shall attach to e-Watch.
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`On January 23, 2015, the Microsoft/Nokia parties and e-Watch advised the
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`Board that they have reached a settlement, and sought authorization to file a joint
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`motion to terminate the proceeding as to the Microsoft/Nokia parties. The Board
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`held a conference call with the parties on January 23, 2015. On January 23, 2015,
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`the Board authorized the filing of a joint motion to terminate this proceeding as to
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`the Microsoft/Nokia parties. Per the Board’s January 23, 2015 authorization order,
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`the Microsoft/Nokia parties and e-Watch understood that they were also to file a
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`separate paper requesting that the Settlement Agreement be treated as business
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`confidential information as specified in 37 C.F.R. § 42.74(c) and that the
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`Settlement Agreement was to be filed in PRPS under the designation of “Board
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`and Parties Only.”
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`Wherefore, the Microsoft/Nokia parties and e-Watch respectfully request
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`termination of the Inter Partes Review of U.S. Patent No. 7,643,168, Case No.
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`IPR2015-00408 as to the Microsoft/Nokia parties.
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`Case IPR2015-00404
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`Dated: January 23, 2015
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`Dated: January 23, 2015
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`(Case No. IPR2015-00408)
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`Respectfully submitted,
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`/Timothy W. Riffe/
`Timothy W. Riffe, Reg. No. 43,881
`Brian J. Livedalen, Reg. No. 67,450
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 202-783-2331
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`Attorneys for Petitioners
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`/Robert C. Curfiss/
`Robert C. Curfiss, Reg. No. 26,540
`19826 Sundance Drive
`Humble, Texas 77346
`T: 832-573-1442
`F: 832-644-6152
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`Attorney for Patent Owner
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`Case IPR2015-00404
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
`certifies that on January 23, 2015, a complete and entire copy of this Joint Motion
`to Terminate with Respect to Microsoft Mobile OY, Microsoft Corporation, and
`Nokia Inc. Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 and its supporting
`exhibit were provided via email to the Patent Owner by serving the email
`correspondence addresses of record as follows:
`Robert C. Curfiss
`19826 Sundance Drive
`Humble, TX 77346
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`David O. Simmons
`IVC Patent Agency
`P.O. Box 26584
`Austin, TX 78755
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`Email: bob@curfiss.com
`Email: dsimmons@sbcglobal.net
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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