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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SONOS, INC.,
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner
`___________________
`
`Case No. IPR2015-00590
`U.S. Patent 8,050,652
`___________________
`
`JOINT MOTION TO TERMINATE AND NOTICE OF SETTLEMENT
`UNDER 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2015-00590
`U.S. Patent 8,050,652
`JOINT MOTION TO TERMINATE AND NOTICE OF SETTLEMENT
`UNDER 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.74, and the Board’s e-mail of
`
`April 28, 2015, authorizing the filing of this joint motion, Petitioner (Sonos, Inc.)
`
`and Patent Owner (Black Hills Media, LLC) (collectively, “the Parties”) jointly
`
`request termination of Inter Partes Review No. IPR2015-00590 involving U.S.
`
`Patent 8,050,652 (“the ‘652 Patent”) pursuant to the Parties’ agreement.
`
`As required by statute, the Parties are filing concurrently herewith as Exhibit
`
`2001 a copy of the Parties’ agreement, along with Patent Owner’s request to treat
`
`the Parties’ agreement as business confidential information and to keep it separate
`
`from the file of the ‘652 Patent. The Parties jointly certify that there is no other
`
`written or oral collateral agreement or understanding made in connection with, or
`
`in contemplation of, the termination of the instant proceeding.
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`The Parties jointly request that the Board terminate this IPR as to both
`
`Parties.
`
`II.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`Termination of this proceeding as to both parties is appropriate because:
`
`(i) the trial is at a sufficiently early stage and the record is incomplete; (ii) the
`
`Parties have resolved their disputes in this proceeding and the related litigation,
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`1
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`IPR2015-00590
`U.S. Patent 8,050,652
`and the Parties to this inter partes review agree that it should be terminated; and
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`(iii) public policy strongly favors settlement.
`
`A. Termination With Respect to Petitioner
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`
`chapter 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.” Because the Parties are
`
`jointly requesting termination and the Office has not yet “decided the merits of the
`
`proceeding before the request for termination is filed,” termination of this
`
`proceeding with respect to Petitioner is proper. Moreover, as set forth in 35 U.S.C.
`
`§ 317(a), because Petitioner and Patent Owner jointly request this termination, no
`
`estoppel under 35 U.S.C. § 315(e) shall attach to Petitioner.
`
`B. Termination With Respect to Patent Owner
`
`Termination of this proceeding with respect to Patent Owner is supported by
`
`the Petitioner and is appropriate for at least the following reasons.
`
`1.
`
`Incomplete Record
`
`The record in this proceeding is incomplete, and the Board has not yet
`
`decided the merits of this proceeding, let alone issued a decision whether to
`
`institute these proceedings. In view of the Parties’ agreement, Patent Owner did
`
`not file a Preliminary Response by the deadline of May 3, 2015. There are no
`
`other outstanding motions before the Board.
`
`2
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`
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`IPR2015-00590
`U.S. Patent 8,050,652
`
`2.
`
`No Further Participation by Petitioner
`
`Upon termination of this proceeding with respect to Petitioner, no petitioner
`
`shall remain. Petitioner hereby informs the Board that Petitioner will not file any
`
`additional papers in this proceeding and will not further participate further in this
`
`proceeding in any respect before the Board.
`
`Because the record is currently incomplete and will not be further
`
`developed, termination as to all parties is favored. Patent Owner notes that in the
`
`absence of Petitioner, it is unclear how these proceedings could properly proceed.
`
`Under these circumstances, there is every reason to honor the Parties’ wishes
`
`to terminate as to both Parties.
`
`3. Maintaining this Inter Partes Review Would Discourage
`Settlements and Waste Judicial Resources
`
`Congress and federal courts have expressed a strong interest in encouraging
`
`settlement of disputes. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
`
`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
`
`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986)
`
`(“The law favors settlement of cases.”), cert denied, 479 U.S. 950 (1986); and 35
`
`U.S.C. § 317(a). Public policy strongly favors allowing parties to settle in all
`
`respects. Indeed, the USPTO’s Office Patent Trial Practice Guide expressly states:
`
`“N. Settlement. There are strong public policy reasons to favor
`settlement between the parties to a proceeding. The Board will be
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`3
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`IPR2015-00590
`U.S. Patent 8,050,652
`available to facilitate settlement discussions, and where appropriate,
`may require a settlement discussion as part of the proceeding. The
`Board expects that a proceeding will terminate after the filing of a
`settlement agreement, unless the Board has already decided the merits
`of the proceeding.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)
`
`(emphasis added).
`
`Thus, maintaining this review in any respect after the Parties’ agreement
`
`would be contrary to public policy and would discourage future settlements by
`
`removing a significant motivation for settlement; eliminating litigation risk by
`
`resolving the parties’ disputes and ending the pending proceedings between them.
`
`Moreover, a reason courts endorse settlement is preservation of judicial
`
`resources. Maintaining this proceeding in any respect after the Parties have
`
`resolved their disputes would waste, rather than conserve, judicial resources of the
`
`USPTO and the Federal Circuit. In addition, Patent Owner will be prejudiced if
`
`this proceeding is not terminated as requested, with respect to additional attorneys’
`
`fees and costs that would need to be incurred in connection with the proceedings.
`
`Status of Proceedings Related to ‘652 Patent
`4.
`The district court litigation between the Parties styled Black Hills Media,
`
`LLC v. Sonos, Inc., U.S. Dist. Ct. (C.D. Cal.), Civil Case No. 2:14-cv-00486-SJO-
`
`PJW, was dismissed pursuant to the Parties’ joint stipulation of dismissal, which is
`
`4
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`
`
`
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`IPR2015-00590
`U.S. Patent 8,050,652
`submitted herewith as Exhibit 2002. Patent Owner lists the following litigation or
`
`proceedings involving or related to the ‘652 Patent, and submits that there is no
`
`other litigation or proceeding involving or related to the ‘652 Patent contemplated
`
`Status
`
`in the foreseeable future:
`
`Litigation
`Black Hills Media, LLC v. LG Elecs. Inc., et
`al., U.S. Dist. Ct. (Del.), Civil Case No.
`1:13-cv-00803-RGA
`Black Hills Media, LLC v. Logitech Int’l SA,
`U.S. Dist. Ct. (Del.), Civil Case No. 1:12-cv-
`00636-RGA
`Black Hills Media, LLC v. Logitech Int’l SA,
`U.S. Dist. Ct. (C.D. Cal.), Civil Case No.
`2:13-cv-06055-SJO-PJW
`Black Hills Media, LLC v. Panasonic Corp.,
`et al., U.S. Dist. Ct. (Del.), Civil Case No.
`1:13-cv-00806-RGA
`Black Hills Media, LLC v. Pioneer Corp., et
`al., U.S. Dist. Ct. (Del.), Civil Case No.
`1:12-cv-00634-RGA
`Black Hills Media, LLC v. Pioneer Corp., et
`al., U.S. Dist. Ct. (C.D. Cal.), Civil Case No.
`2:13-cv-05980-SJO-PJW
`Black Hills Media, LLC v. Pioneer Corp., et
`al., U.S. Dist. Ct. (C.D. Cal.), Civil Case No.
`2:14-cv-00471-SJO-PJW
`Black Hills Media, LLC v. Samsung Elecs.
`Co., Ltd., et al., U.S. Dist. Ct. (E.D. Tex.),
`Civil Case No. 2:13-cv-00379-JRG
`Black Hills Media, LLC v. Sharp Corp., et
`al., U.S. Dist. Ct. (Del.), Civil Case No.
`1:13-cv-00804-RGA
`Black Hills Media, LLC v. Sonos, Inc., U.S.
`Dist. Ct. (Del.), Civil Case No. 1:12-cv-
`00637-RGA
`
`Terminated
`
`Terminated
`
`Terminated
`
`Terminated
`
`Terminated
`
`Terminated
`
`Stayed
`
`Stayed
`
`Terminated
`
`Terminated
`
`5
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`
`
`IPR2015-00590
`U.S. Patent 8,050,652
`
`Terminated
`
`Terminated
`
`Terminated
`
`Terminated
`
`Terminated
`
`Stayed
`
`Terminated
`
`Final Written Decision issued March
`18, 2015, holding all instituted claims
`unpatentable
`Final Written Decision issued March
`18, 2015, holding all instituted claims
`unpatentable
`Judgment entered April 22, 2015,
`canceling all instituted claims
`
`Judgment entered April 22, 2015,
`canceling all instituted claims
`
`
`
`Black Hills Media, LLC v. Sonos, Inc., U.S.
`Dist. Ct. (C.D. Cal.), Civil Case No. 2:13-cv-
`06062-SJO-PJW
`Black Hills Media, LLC v. Sonos, Inc., U.S.
`Dist. Ct. (C.D. Cal.), Civil Case No. 2:14-cv-
`00486-SJO-PJW
`Black Hills Media, LLC v. Toshiba Corp., et
`al., U.S. Dist. Ct. (Del.), Civil Case No.
`1:13-cv-00805-RGA
`Black Hills Media, LLC v. Yamaha Corp. of
`Am., U.S. Dist. Ct. (Del.), Civil Case No.
`1:12-cv-00635-RGA
`Black Hills Media, LLC v. Yamaha Corp. of
`Am., U.S. Dist. Ct. (C.D. Cal.), Civil Case
`No. 2:13-cv-06054-SJO-PJW
`Black Hills Media, LLC v. Yamaha Corp. of
`Am., U.S. Dist. Ct. (C.D. Cal.), Civil Case
`No. 8:14-cv-00101-SJO-PJW
`Digital Media Devices, Including
`Televisions, Blu-Ray Disc Players, Home
`Theater Systems, Tablets and Mobile
`Phones, Components Thereof and Associated
`Software, International Trade Commission,
`Proceeding No. 337-TA-882;
`Inter Partes Review No. IPR2013-00593 of
`U.S. Patent No. 8,045,952
`
`Inter Partes Review No. IPR2013-00594 of
`U.S. Patent No. 8,050,652
`Inter Partes Review No. IPR2014-00737 of
`U.S. Patent No. 8,050,652 (joined with Inter
`Partes Review No. IPR2015-00334)
`Inter Partes Review No. IPR2014-00740 of
`U.S. Patent No. 8,045,952 (joined with Inter
`Partes Review No. IPR2015-00340)
`
`
`6
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`
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`IPR2015-00590
`U.S. Patent 8,050,652
`Of the above-listed district court proceedings, only disputes between Patent
`
`Owner and Pioneer, Samsung, and Yamaha remain pending (each of which is
`
`stayed). Samsung and Yamaha have each filed IPRs against the ‘652 Patent,
`
`IPR2014-00737 and IPR2013-00593, respectively. Pioneer has chosen not to
`
`request inter partes review of the ‘652 Patent, and has not filed a motion for
`
`joinder with any other instituted proceeding involving the ‘652 Patent within the
`
`required one month period, as LG did pursuant to 37 C.F.R. § 42.122(b). See e.g.,
`
`IPR2015-00334 and IPR2015-00340 filed by LG and joined with IPR2014-00737
`
`and IPR2014-00740, respectively. That the above-listed case between Patent
`
`Owner and Pioneer remains pending does not outweigh the reasons discussed
`
`above strongly favoring termination of this proceeding, including an incomplete
`
`record, public policy reasons promoting settlement, conservation of judicial
`
`resources, and prejudice to Patent Owner.
`
`IV. CONCLUSION
`
`Accordingly, the parties respectfully request termination of this proceeding
`
`in its entirety as to all Parties. Any reasonable weighing of the issues/factors
`
`discussed herein heavily favors termination of the entire proceeding as to all
`
`Parties.
`
`
`
`7
`
`
`
`
`
`Respectfully submitted,
`Dated: May 14, 2015
`
`
`Respectfully submitted,
`Dated: May 14, 2015
`
`IPR2015-00590
`U.S. Patent 8,050,652
`
`
`
`
`
`
`
`
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Counsel for Patent Owner
`
`By: /Sean M. Sullivan/ by permission
`Sean M. Sullivan, Reg. No. 40,191
`Lee Sullivan Shea & Smith LLP
`150 South Wacker Drive, Suite 2400
`Chicago, Illinois 60606
`(312) 754-9602 (telephone)
`(312) 754-9603 (facsimile)
`Counsel for Petitioner
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2015-00590
`U.S. Patent 8,050,652
`
`
`
` I
`
` hereby certify that on May 14, 2015, a true and accurate copy of this paper, JOINT
`MOTION TO TERMINATE AND NOTICE OF SETTLEMENT UNDER 35 U.S.C. § 317
`AND 37 C.F.R. § 42.74, was served on the following counsel for Petitioner via
`email:
`
`George I. Lee (lee@ls3ip.com)
`Sean M. Sullivan (sullivan@ls3ip.com)
`Rory P. Shea (shea@ls3ip.com)
`John Dan Smith (smith@ls3ip.com)
`Lee Sullivan Shea & Smith LLP
`150 South Wacker Drive, Suite 2400
`Chicago, Illinois 60606
`Tel: (312) 754-9602
`Fax: (312) 754-9603
`
`Dated: May 14, 2015
`
`
`
`
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Counsel for Patent Owner
`
`9
`
`
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