IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.
`Petitioner
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`v.
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`E-WATCH, INC.
`Patent Owner
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`Case IPR2015-00408
`Patent No. 7,643,168
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`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C § 317 AND 37 C.F.R. § 42.74
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.
`Petitioner
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`v.
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`E-WATCH, INC.
`Patent Owner
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`
`
`Case IPR2015-00408
`Patent No. 7,643,168
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`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C § 317 AND 37 C.F.R. § 42.74
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`Case IPR2015-00408
`Patent No. 7,643,168
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner LG Electronics,
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`Inc. (“LG”) and Patent Owner e-Watch, Inc. (“e-Watch”) jointly move to terminate
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`the present inter partes review proceeding with respect to both the Petitioner and
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`Patent Owner, in light of the parties’ resolution of their dispute relating to U.S. Patent
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`No. 7,643,168 (“the ’168 patent”).
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`Termination with respect to Petitioner LG 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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`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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`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. e-Watch’s Patent Owner Response is not
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`due until September 21, 2015. 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 factors militate against termination of this proceeding with respect to both
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`Petitioner and Patent Owner.
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`- 2 -
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`Case IPR2015-00408
`Patent No. 7,643,168
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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 1029. The parties further
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`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 hereby certify that, to the best of their knowledge, the document
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`sought to be protected has not been made publicly available.
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`There are no collateral agreements referred to in the parties’ agreement. As
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`stated in 35 U.S.C. § 317(a), because LG and e-Watch jointly request this
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`termination, it is understood that no estoppel under 35 U.S.C. § 315(e) shall attach
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`to LG. As provided in 37 C.F.R. § 42.73(d)(3), because no adverse judgment has
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`been entered, it is also understood that, as to e-Watch, no estoppel under 37 C.F.R.
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`§ 42.73(d)(3) shall attach to e-Watch.
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`The status of all district court cases involving U.S. Patent No. 7,643,168 is
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`presented below.
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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 Corpo-
`ration
`e-Watch, Inc. and e-Watch
`Corporation v. HTC Corpora-
`tion and HTC America, Inc.
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`
`Court
`E.D. Tex.
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`Filed
`Status
`12/09/13 Pending
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`Cause No.
`13-01061
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`E.D. Tex.
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`12/13/13 Terminated 13-01078
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`E.D. Tex.
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`12/13/13 Pending
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`13-01063
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`- 3 -
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`Case IPR2015-00408
`Patent No. 7,643,168
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`E.D. Tex.
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`12/13/13 Pending
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`13-01076
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`E.D. Tex.
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`12/09/13 Terminated 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 Terminated 13-01073
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`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.
`e-Watch, Inc. and e-Watch
`Corporation v. Sharp Corpora-
`tion and Sharp Electronics Cor-
`poration
`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.
`On September 3, 2015, LG and e-Watch advised the Board that they have
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`E.D. Tex.
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`12/13/13 Pending
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`13-01071
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`reached a settlement, and sought authorization to file a joint motion to terminate the
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`proceeding. The Board authorized the filing of a joint motion to terminate this
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`- 4 -
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`Case IPR2015-00408
`Patent No. 7,643,168
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`proceeding on September 8, 2015. Per the Board’s Order, the parties understood
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`that the joint motion is to include a request that the agreement be treated as business
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`confidential information as specified in 37 C.F.R. § 42.74(c) and that the Settlement
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`Agreement was to be filed in PRPS under the designation of “Parties and Board
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`Only.”
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`For the foregoing reasons, the parties jointly and respectfully request that the
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`instant proceeding be terminated with respect to both Petitioner and Patent Owner.
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`
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`Date: September 11, 2015
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`Respectfully submitted,
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`/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
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`
`/s/ Timothy W. Riffe
`Timothy W. Riffe
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR18768-0065IP1@fr.com
`Telephone: (202) 783-5070
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`Case IPR2015-00408
`Patent No. 7,643,168
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`Facsimile:
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`(202) 783-2331
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`Attorney for Petitioner
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`- 6 -
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned JOINT MOTION
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`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 September 11, 2015 on
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`the following parties via electronic mail:
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`
`Timothy W. Riffe
`Brian J. Livedalen
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR18768-0065IP1@fr.com
`Telephone: (202) 783-5070
`Facsimile:
`(202) 783-2331
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`
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`/Robert C. Curfiss/
`Robert C. Curfiss
`Reg. No. 26,540
`19826 Sundance Drive
`Humble, Texas 77346
`Lead Counsel for Patent Owner
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