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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`APPLE INC. AND TWITTER, INC.
`Petitioner
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`v.
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`SUMMIT 6, LLC
`Patent Owner
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`_____________________
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`Case IPR2015-00685
`Patent 7,765,482
`_____________________
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`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317
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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 IPR2015-00685 of
`U.S. Patent No. 7,765,482
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`INTRODUCTION
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`On May 19, 2015, one party of petitioner, Twitter, and patent owner Summit
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`6 entered into a settlement agreement. Separately, on May 26, 2015, the other party
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`of petitioner, Apple, and patent owner Summit 6 entered into a settlement
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`agreement. Pursuant to the agreements, Summit 6 agreed to dismiss with prejudice
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`all of its pending patent infringement claims against both Twitter and Apple, which
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`it has since done. In return, each of Twitter and Apple agreed to move to dismiss
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`all pending inter partes review proceedings (IPRs) filed by Apple/Twitter against
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`Summit 6’s patents, including this one.
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`The Board sent an e-mail on June 8, 2015, authorizing the parties to file a
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`joint motion to terminate the above-captioned inter partes review, Case No.
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`IPR2015-00685 (the “Review”). The parties therefore jointly move to terminate the
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`Review.
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`As part of the motion, the Board asked the parties to briefly explain why
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`termination is appropriate, and to provide the Board with a status update of any
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`related district court litigations involving the ’482 patent, including the status of
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`each of the defendants. Those sections follow below. The Board also required
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`submission of a true copy of the Twitter/Summit 6 settlement agreement and the
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`Apple/Summit 6 settlement agreement. The Twitter/Summit 6 settlement
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`agreement is filed separately and concurrently with this motion, as Exhibit 1030,
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`Case IPR2015-00685 of
`U.S. Patent No. 7,765,482
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`along with a request to treat the settlement agreement as business confidential
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`information under 37 C.F.R. § 42.74(c). Similarly, the Apple/Summit 6 settlement
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`agreement is also filed separately and concurrently with this motion, as Exhibit
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`1031, along with a request to treat the settlement agreement as business
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`confidential information under 37 C.F.R. § 42.74(c).
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`WHY TERMINATION IS APPROPRIATE
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`This proceeding is still in its infancy with Patent Owner having only recently
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`filed its preliminary patent owner response pursuant to 37 C.F.R. § 42.107.
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`Termination of this proceeding is proper under 35 U.S.C. § 317(a) because the
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`parties are jointly requesting termination and the Office has not yet “decided the
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`merits of the proceeding before the request for termination is filed.” The parties
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`settled their dispute, effective on or about May 19 and 26, 2015, by entering into a
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`settlement agreement resolving all issues and agreeing to terminate this proceeding
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`and the related petitions for inter partes review. Based on this agreement, each of
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`Apple and Twitter withdraw from, and will not participate further in, this
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`proceeding. Accordingly, Apple/Twitter and Summit 6 jointly request that the
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`Board terminate this proceeding in its entirety.
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`Concluding this proceeding at this juncture promotes the Congressional goal
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`of establishing a more efficient and streamlined patent system that, inter alia,
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`limits unnecessary and counterproductive litigation costs. See Changes to
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`Case IPR2015-00685 of
`U.S. Patent No. 7,765,482
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`Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and
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`Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 157, p.
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`48680 (Aug. 14, 2012). By terminating IPR proceedings based upon the parties’
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`settlement of their disputes, the Board provides litigants a measure of certainty that
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`promotes settlements and creates a timely and cost-effective alternative to district
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`court litigation. See also Office Patent Trial Practice Guide, 77 Fed. Reg. 157, p.
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`48768 (Aug. 14, 2012) (“There are strong public policy reasons to favor settlement
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`between the parties to a proceeding.”).
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`Both Congress and federal courts have also expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
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`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
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`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed.
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`Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950
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`(1986). The Federal Circuit places a particularly strong emphasis on settlement.
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`For example, it endorses the ability of parties to agree to never challenge validity
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`as part of a settlement. See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1370 (Fed.
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`Cir. 2001); see also Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed.
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`Cir. 1986) (noting that the law favors settlement to reduce antagonism and hostility
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`between parties).
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`Case IPR2015-00685 of
`U.S. Patent No. 7,765,482
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`Maintaining this Review after Apple and Twitter’s separate settlements with
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`Summit 6 would discourage future settlements by removing a primary motivation
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`for settlement: eliminating litigation risk by resolving the parties’ disputes and
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`ending the pending proceedings between them. For patent owners, litigation risks
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`include the potential for their patents to be invalidated. If a patent owner knows
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`that an inter partes review is likely to continue regardless of settlement, it can
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`create a strong disincentive for the patent owner to settle.
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`Additionally, it would not be appropriate for the Board to proceed to a final
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`written decision under section 318(a) in this case. This proceeding is in its infancy.
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`No trial has yet been initiated. Continuing this proceeding any further will force
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`the parties to expend unnecessary and counterproductive litigation resources.
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`Accordingly, petitioner Apple/Twitter and patent owner Summit 6 jointly request
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`termination of this Review.
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`STATUS OF RELATED LITIGATION
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`There are four related district court litigations involving the ’482 patent and
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`related U.S. Pat. Nos. 6,895,557 and 8,612,515. They are listed below, along with a
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`complete list of parties and the status of each:
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` Summit 6 LLC v. Twitter, Inc., No. TXND-7-2015-cv-00062 (February 18,
`2014). The defendant is:
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`Case IPR2015-00685 of
`U.S. Patent No. 7,765,482
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`1.
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`Twitter, Inc. – The parties filed a joint stipulation and proposed order
`to dismiss on May 21, 2015. The case was terminated on May 26,
`2015.
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` Summit 6 LLC v. Apple Inc., No. TXND-7-14-cv-00106-O (February 18,
`2014). The defendant is:
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`1.
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`Apple Inc. – On June 8, 2015, Summit 6 and Apple Inc. filed a Joint
`Stipulation of Dismissal pursuant to a settlement agreement between
`the parties.
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` Summit 6 LLC v. HTC Corporation et al., No. TXND-7:14-cv-00014-O
`(February 18, 2014). The defendants include:
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`1.
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`Apple Inc. – Apple was terminated as a party to this case on
`September 10, 2014 and moved to Case No. TXND-7-14-cv-00106-O.
`HTC America Inc. – On June 1, 2015, Summit 6 and HTC America
`Inc. filed a Joint Stipulation of Dismissal pursuant to a settlement
`agreement between the parties.
`HTC Corporation – On June 1, 2015, Summit 6 and HTC America
`Inc. filed a Joint Stipulation of Dismissal pursuant to a settlement
`agreement between the parties.
`LG Electronics MobileComm USA, Inc. - The court granted a joint
`motion to dismiss on April 23, 2015.
`LG Electronics USA, Inc. - The court granted a joint motion to
`dismiss on April 23, 2015.
`LG Electronics, Inc. - The court granted a joint motion to dismiss on
`April 23, 2015.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Case IPR2015-00685 of
`U.S. Patent No. 7,765,482
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`8.
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`7. Motorola Mobility LLC - Litigation is ongoing. However, the parties
`are engaged in settlement discussions to settle this dispute.
`Twitter, Inc. – Twitter was terminated as a party to this case on May
`22, 2015 and moved to Case No. TXND-7-2015-cv-00062.
` Summit 6 LLC v. Research in Motion Corporation, et. al.., No. 3:11-cv-
`00367-O (February 23, 2011). The defendants include:
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`1. Facebook, Inc. – The court granted a joint motion to dismiss Facebook
`from the lawsuit on February 19, 2013.
`2. Multiply, Inc. – The court granted a joint motion to dismiss Multiply
`from the lawsuit on July 27, 2012.
`3. Photobucket Corporation – The court granted a joint motion to dismiss
`Photobucket from the lawsuit on July 27, 2012.
`4. Research in Motion, Corporation – The court granted a joint motion to
`dismiss Research in Motion from the lawsuit on October 30, 2012.
`5. Research in Motion, Limited– The court granted a joint motion to dismiss
`Research in Motion from the lawsuit on October 30, 2012.
`6. Samsung Electronics Co., Ltd. – Appealed to the Federal Circuit.
`Decision pending. While U.S. Pat. No. 6,895,557 patent was initially
`asserted against Samsung, that patent is no longer at issue in the case. In
`addition, U.S. Pat. No. 8,612,515 was not asserted in that case.
`7. Samsung Telecommunications America, LCC– Appealed to the Federal
`Circuit. Decision pending. While U.S. Pat. No. 6,895,557 patent was
`initially asserted against Samsung, that patent is no longer at issue in the
`case. In addition, U.S. Pat. No. 8,612,515 was not asserted in that case.
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`Case IPR2015-00685 of
`U.S. Patent No. 7,765,482
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`STATUS OF RELATED PTAB PROCEEDINGS
`The ’482 patent is also involved in three additional inter partes reviews,
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`IPR2015-00686, -00687, and -00688, all filed by the same petitioner and for which
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`motions to terminate are also being filed, and one additional inter partes review,
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`IPR2015-00806, filed by Google et al., which appears to still be pending.
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`NO OTHER COLLATERAL AGREEMENTS
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`The undersigned represents that there are no other collateral agreements
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`between each petitioner and Summit 6, and that Exhibits 1030 and 1031 represent
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`true copies of the individual agreements between the parties that resolves, inter
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`alia, this Review, Case No. IPR2015-00685. See 37 C.F.R. § 42.74(b). The
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`agreements attached as Exhibits 1030 and 1031 reflect the parties’ agreement to
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`terminate this proceeding.
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`FUTURE PARTICIPATION BY THE PARTIES
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`In accordance with the settlement agreements, Twitter and Apple will no
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`longer participate in these proceedings, even if they are not terminated pursuant to
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`this Joint Motion. Summit 6 reserves the right to participate (including the right to
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`seek exclusion of some or all the testimony of Petitioner’s declarant), if necessary.
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`Patent Owner notes, however, that in the absence of Twitter and Apple, it is
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`unclear how these proceedings could properly proceed.
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`Case IPR2015-00685 of
`U.S. Patent No. 7,765,482
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`CONCLUSION
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`For the foregoing reasons, the petitioner Apple/Twitter and the patent owner
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`Summit 6 jointly and respectfully request that the Board terminate this Review in
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`its entirety.
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`Date: June 10, 2015
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`Date: June 10, 2015
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`Respectfully submitted,
`/Jason D. Eisenberg/
`Jason D. Eisenberg, Registration No. 43,447
`Lead Counsel for Petitioner
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`Respectfully submitted,
`/Peter J. Ayers/
`Peter J. Ayers, Registration No. 38,374
`Lead Counsel for Patent Owner
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`Case IPR2015-00685 of
`U.S. Patent No. 7,765,482
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the above-captioned JOINT MOTION
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`TO TERMINATE and any accompanying documents were served electronically via
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`e-mail on June 10, 2015, in their entireties on Attorneys for Patent Owner –
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`Summit 6, LLC:
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`Peter J. Ayers (Lead counsel)
`Robert J. Carlson (Backup counsel)
`Brian Mangum (Backup counsel)
`LEE & HAYES, PLLC
`peter@leehayes.com
`bob@leehayes.com
`brianm@leehayes.com
`Summit6IPRService@leehayes.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`Date: June 10, 2015
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`2005504_1.DOCX
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`/JASON D. EISENBERG/
`Jason D. Eisenberg
`Attorney for Petitioner
`Registration No. 43,447
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