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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`Case No. IPR2015-00717
`Patent No. 7,027,411
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`SERVICENOW, INC.,
`
`Petitioner,
`
`v.
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`
`Patent Owner.
`____________________________________________
`
`Case No. IPR2015-00717
`
`U.S. Patent No. 7,027,411
`____________________________________________
`
`SERVICENOW, INC.’S AND HEWLETT PACKARD ENTERPRISE
`COMPANY’S JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(A)
`
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`ActiveUS 153504517v.1
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`Case No. IPR2015-00717
`Patent No. 7,027,411
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, ServiceNow, Inc.
`
`(“Petitioner”) and Hewlett Packard Enterprise Company (“Patent Owner”) jointly
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`move for termination of the inter partes review of U.S. Patent No. 7,027,411 (“the
`
`‘411 patent), Case No. IPR2015-00717, with the United States Patent and
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`Trademark Office, and request that the Settlement Agreement be treated as
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`business confidential information pursuant to 35 U.S.C. § 317(b). This Joint
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`Motion was authorized by the Board pursuant to its email dated March 9, 2016.
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`Petitioner filed its petition for inter partes review on February 6, 2015. The
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`inter partes review was instituted on August 26, 2015. The parties have settled
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`their dispute with respect to the above-captioned inter partes review and the
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`related litigation, and have reached agreement to terminate this inter partes review.
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`The Settlement Agreement between the parties has been made in writing and is
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`dated March 4, 2016. A true copy of the Settlement Agreement in accordance with
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b) is being submitted concurrently
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`herewith as Exhibit 2008. There are no collateral agreements or understandings
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`made in connection with, or in contemplation of, the termination of this inter
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`partes review.
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`Submitted concurrently herewith is a request by Petitioner and Patent Owner
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`that the Settlement Agreement be treated as business confidential information, be
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`Case No. IPR2015-00717
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`Patent No. 7,027,411
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`kept separate from the file of the involved patents, and be made available only to
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`Federal Government agencies on written request, or to any person on a showing of
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`good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`Patent Owner filed a patent infringement lawsuit against Petitioner, alleging
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`infringement of the ‘411 patent and seven other patents. The lawsuit is captioned
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`Hewlett Packard Enterprise Company v. ServiceNow, Inc., Case No. 14-cv-00570,
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`before the United States District Court for the Northern District of California. The
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`parties have agreed to the dismissal with prejudice of all claims in this lawsuit,
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`including those relating to the ‘411 patent, and the parties have filed a Stipulation
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`and Proposed Order for Dismissal with Prejudice. The lawsuit has now been
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`dismissed with prejudice. There is no other litigation or proceeding involving the
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`‘411 patent, and no litigation or proceeding is contemplated in the foreseeable
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`future in view of the Settlement Agreement.
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`Termination of this inter partes review is appropriate because the Board has
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`not yet decided the merits of this proceeding. There are no other petitioners in this
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`inter partes review, and no final written decision on the merits has been entered.
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`In addition, no dispute remains between the Patent Owner and the Petitioner
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`involving the ‘411 patent or any related patents, and the litigation between the
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`parties involving the ‘411 patent is being dismissed with prejudice as part of the
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`settlement. Termination of this inter partes review will conserve the time and
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`Case No. IPR2015-00717
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`Patent No. 7,027,411
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`resources of the parties and the Board. For at least these reasons, termination of
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`the inter partes review is proper under 35 U.S.C. § 317(a) and 37 C.F.R. §
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`42.74(a). Should this joint motion to terminate be denied, Petitioner would not
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`continue to participate in this inter partes review proceeding.
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`As stated in 35 U.S.C. § 317(a) and 37 C.F.R. § 42.73(d), because Petitioner
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`and Patent Owner jointly request this termination, no estoppel under 35 U.S.C. §
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`315(e) shall attach to the Petitioner.
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`Respectfully Submitted,
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`/Monica Grewal/
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`
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`
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`
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`Monica Grewal, Reg. No. 40,056
`Wilmer Cutler Pickering Hale and
`Dorr LLP,
`60 State Street, Boston, MA 02109.
`Telephone: (617) 526-6223
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`Facsimile: (617) 526-5000
`Email:
`Monica.Grewal@wilmerhale.com;
`WHIPDocketStaff@wilmerhale.com
`Counsel for Hewlett Packard
`Enterprise Company
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`Dated: March 10, 2016
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`Case No. IPR2015-00717
`Patent No. 7,027,411
`/Andrew Mace/
`
`
`
`
`Andrew Mace, Reg. No. 63,342
`COOLEY LLP, ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite
`700
`Washington, DC 20004
`
`Tel: (650) 843‐5808
`Fax: (650) 849‐7400
`
`Email: amace@cooley.com;
`zpatdcdocketing@cooley.com
`Counsel for ServiceNow, Inc.
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`Case No. IPR2015-00717
`Patent No. 7,027,411
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 10th, 2016, I caused a true and correct copy of
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`the foregoing materials:
`
` SERVICENOW, INC.’S AND HEWLETT PACKARD
`ENTERPRISE COMPANY’S JOINT MOTION TO TERMINATE
`PROCEEDING PURSUANT TO 35 U.S.C. § 317(A), and
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` Exhibit 2008
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`to be served via email on the following attorneys of record for Petitioner:
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` Heidi L. Keefe (hkeefe@cooley.com; zpatdcdocketing@cooley.com)
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` Andrew C. Mace (amace@cooley.com)
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` Phillip E. Morton (pmorton@cooley.com)
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` Mark Weinstein (mweinstein@cooley.com)
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`
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`/Monica Grewal/
`
`
`Monica Grewal
`
` Registration No. 40,056
`
`
`ActiveUS 153504517v.1
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`5

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