UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FACEBOOK, INC. & INSTAGRAM, LLC
`Petitioner
`
`v.
`
`TLI COMMUNICATIONS LLC
`Patent Owner
`
`
`Case IPR2015-00778
`Patent 6,038,295
`
`
`JOINT MOTION TO TERMINATE
`PROCEEDINGS
`
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FACEBOOK, INC. & INSTAGRAM, LLC
`Petitioner
`
`v.
`
`TLI COMMUNICATIONS LLC
`Patent Owner
`
`
`Case IPR2015-00778
`Patent 6,038,295
`
`
`JOINT MOTION TO TERMINATE
`PROCEEDINGS
`
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner FACEBOOK, INC. &
`
`INSTAGRAM, LLC and Patent Owner TLI COMMUNICATIONS LLC
`
`(collectively, “the Parties”) jointly request that this inter partes review
`
`proceeding involving U.S. Patent No. 6,038,295 (“the ‘295 patent”) be
`
`terminated based on dismissal of related litigation involving the ’295 patent.
`
`II. REASONS FOR GRANTING THE MOTION
`
`Generally, the Board expects that a proceeding will terminate after the
`
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized
`
`filing of the instant motion on January 27, 2016. Guidance as to the content
`
`of a motion to terminate is provided in IPR2013-00428, Paper No. 56.
`
`There, the Board indicated that a joint motion, such as this one, should (a)
`
`include a brief explanation as to why termination is appropriate; (b) identify
`
`all parties in any related litigation involving the patent at issue; (c) identify
`
`any related proceedings currently before the Office; and (d) discuss
`
`specifically the current status of each such related litigation or proceeding
`
`with respect to each party to the litigation or proceeding. Id. at 2. This
`
`motion satisfies each of the above requirements and is accompanied by an
`
`agreement made in connection with this termination of this proceeding
`
`
`
`2
`
`
`
`
`
`(“Agreement”), as required by 35 U.S.C. § 317(b) and 35 C.F.R. § 42.74 (b).
`
`a. Brief Explanation of Why Termination is Appropriate
`
`Termination is appropriate because oral argument has not been held,
`
`the Board has not decided the merits of the proceeding, and a final written
`
`decision has not been issued. By virtue of the Agreement, the dispute
`
`between the Parties has been resolved and dismissal of the Parties’ related
`
`litigation regarding the ‘295 patent: TLI Communications LLC v. AV
`
`Automotive, L.L.C. et al., No. 1:14-cv-00142 (E.D. Va.), which was
`
`consolidated into the multidistrict litigation entitled In re TLI
`
`Communications LLC Patent Litigation, No. 1:14-md-2534 (E.D. Va.) and
`
`was appealed as TLI Communications LLC v. AV Automotive, L.L.C. et al.,
`
`Appeal No. 2015-1372 (Fed. Cir.) agreed. Per the Agreement, the Parties
`
`will jointly move to dismiss the litigation and appeal as to Petitioner.
`
`b. All Parties in Any Pending Related Litigation Involving the
`
`Patent at Issue
`
`In addition to Petitioner, defendants in the above-identified related
`
`litigation are AV Automotive, L.C.C., Hall Automotive, LLC, Yahoo! Inc.,
`
`Tumblr, Inc., Twitter, Inc., Pinterest, Inc., Dropbox, Inc.,
`
`IAC/InteractiveCorp, CityGrind Media LLC, Vimeo LLC, Imgur LLC,
`
`ShutterFly, Inc., TripAdvisor Inc., TripAdvisor LLC, Snapchat Inc., Yelp,
`
`
`
`3
`
`
`
`
`
`Inc., Capital One Financial Corporation, Capital One, N.A., Capital One
`
`Services, LLC, and Vine Labs, Inc. The appeal is fully-briefed and is
`
`currently pending.
`
`c. Related Proceedings Currently Before the Office
`
`There are no related proceedings pending before the Office.
`
`d. Current Status of Each Such Related Litigation of Proceeding
`
`With Respect to Each Party in the Litigation or Proceeding
`
`Sections II.b and II.c above indicate the status of each related
`
`litigation or proceeding with respect to each party to the litigation or
`
`proceeding.
`
`III. AGREEMENT
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the
`
`Agreement is in writing, and a true and correct copy is being filed
`
`concurrently herewith as Exhibit 2011.1 A related Release Agreement
`
`between the Parties is being filed concurrently herewith as Exhibit 2012.
`
`The Parties are also filing concurrently herewith a joint request under 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat the Agreement and Release
`
`
`
`1 The Agreement is being filed via the Patent Review Processing System
`
`(PRPS) with access to the “Parties and Board only.”
`
`
`
`4
`
`
`
`
`
`Agreement as business confidential information and keep them separate
`
`from the files of the ‘295 patent.
`
`IV. CONCLUSION
`
`For all these reasons, the Parties respectfully request termination of
`
`this proceeding.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Tarek N Fahmi/
` Tarek N. Fahmi
`Reg. No. 41,402
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`Counsel for Patent Owner
`
`
`
`
`
`
`Dated: February 17, 2016
`
`
`
`
`
`
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW,
`Suite 700
`Washington, DC 20004
`
`Tel: (703) 456-8000
`Email: hkeefe@cooley.com
`Counsel for Petitioner
`
`
`
`
`
`5
`
`
`
`EXHIBIT LIST
`
`Sharp J-SH04, Wikipedia (July 7, 2014, 11:15 AM), (retrieved
`
`from: http://en.wikipedia.org/wiki/J-SH04).
`
`
`
`
`
`Ex. 2001
`
`Ex. 2002 Facebook, Inc. v. TLI Communications LLC, IPR2014-0056,
`
`DECISION Denying Institution of Inter Partes Review, Paper
`
`14 (P.T.A.B. Sep. 15, 2014).
`
`Ex. 2003
`
`Supplemental Expert Report of Dr. V. Thomas Rhyne
`
`Regarding the Invalidity of the Asserted Claims of U.S. Patent
`
`Nos. 6,895,557 and 7,765,482, dated September 14, 2012
`
`(From Summit 6 Litigation).
`
`Ex. 2004 April 2, 2013 Trial Transcript From the Summit 6 Litigation
`
`(Direct and Cross Examination of Dr. Rhyne).
`
`Ex. 2005 April 3, 2013 Trial Transcript From the Summit 6 Litigation
`
`(Cross Examination of Dr. Rhyne).
`
`Ex. 2006 Expert Report of Dr. V. Thomas Rhyne Regarding the
`
`Invalidity of the Asserted Claims of U.S. Patent Nos. 6,895,557
`
`and 7,765,482, dated August 1, 2012 (From Summit 6
`
`Litigation).
`
`
`
`
`
`Transcript of Deposition of David Klausner Oct. 28, 2015.
`Transcript of Deposition of David Klausner Oct. 28, 2015.
`
`Prosecution history of US Pat. 6,038,295.
`Prosecution history of US Pat. 6,038,295.
`
`
`
`
`
`Ex. 2007
`
`. 2007
`
`EX
`
`Ex. 2008
`
`. 2008
`
`EX
`
`Ex. 2009 Declaration of Prasant Mohapatra.
`Declaration of Prasant Mohapatra.
`
`. 2009
`
`EX
`
`Ex. 2010 Curriculum Vitae of Prasant MohapatraEx.
`Curriculum Vitae of Prasant MohapatraEx.
`
`.2010
`
`EX
`
`Ex. 2011 Agreement (Parties and Board only).
`Agreement (Parties and Board only).
`
`.2011
`
`EX
`
`Ex. 2012 Release Agreement (Parties and Board only).
`Release Agreement (Parties and Board only).
`
`.2012
`
`EX
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`JOINT MOTION TO TERMINATE PROCEEDINGS
`was served on February 17, 2016, by filing this document though the Patent
`Review Processing System as well as by delivering a copy via email directed
`to the attorneys of record for the Petitioner at the following address:
`
`Heidi L. Keefe
`Andrew C. Mace
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
`hkeefe@cooley.com
`amace@cooley.com
`zpatdcdocketing@cooley.com
`The parties have agreed to electronic service in this proceeding.
`
`
`
`
`
`
`Respectfully submitted,
`/Tarek N. Fahmi/
`Dated: 2/17/2016
`
`
`
`
`
`
`
`
`
`Tarek N. Fahmi
`
`
`
`
`
`
`Reg. No. 41,402
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
