UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`GOOGLE INC.,
`HTC CORPORATION, HTC AMERICA, INC.,
`Petitioners
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner
`
`
`
`
`Case IPR2015-00806:
`Patent 7,765,482
`
`
`
`
`
`
`PETITIONERS HTC CORPORATION AND HTC AMERICA, INC.’S
`(“HTC ENTITIES”)
`AND
`PATENT OWNER SUMMIT 6 LLC’S
`JOINT MOTION TO TERMINATE INVOLVEMENT OF THE HTC
`ENTITIES
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`GOOGLE INC.,
`HTC CORPORATION, HTC AMERICA, INC.,
`Petitioners
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner
`
`
`
`
`Case IPR2015-00806:
`Patent 7,765,482
`
`
`
`
`
`
`PETITIONERS HTC CORPORATION AND HTC AMERICA, INC.’S
`(“HTC ENTITIES”)
`AND
`PATENT OWNER SUMMIT 6 LLC’S
`JOINT MOTION TO TERMINATE INVOLVEMENT OF THE HTC
`ENTITIES
`
`
`
`
`U.S. Patent No. 7,765,482
`IPR2015-00806
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and the Board’s
`
`authorization given via email on June 9, 2015, Petitioners HTC Corporation and
`
`HTC America, Inc. (“HTC Entities”) and Patent Owner Summit 6 LLC (“Summit
`
`6”) jointly request termination of the HTC Entities’ involvement in Inter Partes
`
`Review IPR2015-00806 of U.S. Patent No. 7,765,482 (“the ’482 Patent”).
`
`The HTC Entities and Summit 6 do not request termination of IPR2015-
`
`00806. Petitioner Google Inc. remains a party to this proceeding.
`
`II.
`
`STATEMENT OF FACTS
`
`This proceeding has not yet been instituted. The HTC Entities were named
`
`as Petitioners along with Google Inc. on a Petition for Inter Partes Review filed on
`
`February 25, 2015. Summit 6 has not yet filed its preliminary response.
`
`On June 1, 2015, the HTC Entities and Summit 6 entered into a Settlement
`
`Agreement, through which the HTC Entities and Summit 6 resolved their pending
`
`disputes relating to the ’482 Patent, including this proceeding.
`
`In addition to Case Number IPR2015-00806, the HTC Entities are a
`
`Petitioner in one petition for inter partes review of related U.S. Patent No.
`
`8,612,515: IPR2015-00807. The HTC Entities and Summit 6 are filing a
`
`concurrent joint motion to terminate the HTC Entities’ involvement in IPR2015-
`
`
`
`1
`
`
`
`U.S. Patent No. 7,765,482
`IPR2015-00806
`
`00807. The Settlement Agreement filed as Exhibit 1015 reflects the agreement to
`
`terminate the HTC Entities’ involvement in both proceedings. See ¶ 9.
`
`The ’482 Patent is also subject to four separate petitions for inter partes
`
`review: IPR2015-00685, IPR2015-00686, IPR2015-00687, and IPR2015-00688.
`
`The parties to IPR2015-00685, IPR2015-00686, IPR2015-00687, and IPR2015-
`
`00688 have likewise entered into a settlement agreement and are also filing joint
`
`motions to terminate those proceedings.
`
`III. ARGUMENT
`A. Termination of the HTC Entities’ Involvement in IPR2015-00806
`is Appropriate
`
`The Board should terminate the HTC Entities as parties to IPR2015-00806
`
`for at least the following reasons:
`
`First, the statutory condition for termination under 35 U.S.C. § 317(a) is
`
`satisfied⎯this joint request is being filed before Summit 6 has filed a preliminary
`
`response to the petition, before the Board has instituted trial, and well before the
`
`Board has decided the merits of this proceeding. Under Section 317(a), an inter
`
`partes review shall be terminated “unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” There are no other
`
`preconditions of 35 U.S.C. § 317(a).
`
`Second, the HTC Entities and Summit 6 have agreed to take action to
`
`terminate the HTC Entities’ involvement in this proceeding, in connection with
`2
`
`
`
`
`
`U.S. Patent No. 7,765,482
`IPR2015-00806
`
`their negotiating a definitive resolution of all disputes between the HTC Entities
`
`and Summit 6.
`
`Third, the merits of the petition have not been determined, no motions or
`
`other matters are pending or outstanding, and concluding this proceeding with
`
`respect to the HTC Entities promotes efficient use of the resources of the Board
`
`and saves expense for the HTC Entities and Summit 6.
`
`B.
`
`Termination of the HTC Entities’ Involvement in this Proceeding
`without Terminating the Proceeding is Appropriate
`
`A proceeding will generally terminate as to settling parties 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). As discussed above, Google Inc. remains as
`
`Petitioner. Where at least one entity constituting Petitioner remains as a party to
`
`the proceeding, it is appropriate to terminate the involvement of only the settling
`
`parties without termination of the instant proceeding. See, e.g., IPR2014-01411,
`
`Paper 30, at 2 (Apr. 14, 2015); IPR2014-00954, Paper 41, at 4-5 (March 24, 2015)
`
`(noting that termination of proceedings applied only to settling parties). Because
`
`the HTC Entities have settled and Google Inc. has not, it is appropriate to terminate
`
`the HTC Entities’ involvement in IPR2015-00806 without terminating the entire
`
`proceeding.
`
`
`
`3
`
`
`
`U.S. Patent No. 7,765,482
`IPR2015-00806
`
`
`C. A True Copy of the Settlement Agreement between the HTC
`Entities and Summit 6 is Attached
`
`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy
`
`of the Settlement Agreement is filed as Exhibit 1015 along with a Joint Request to
`
`File Settlement Agreement as Business Confidential Information under 35 U.S.C. §
`
`317, both of which are filed concurrently with this Joint Motion. The undersigned
`
`represent that there are no other written or oral agreements, including any collateral
`
`agreements, between Summit 6 and the HTC Entities.
`
`IV. SUMMARY
`For the foregoing reasons, the HTC Entities and Summit 6 respectfully
`
`request that the Board terminate the HTC Entities’ involvement in IPR2015-00806,
`
`leaving Google Inc. as the remaining Petitioner in this proceeding.
`
`As a result of this joint request by the HTC Entities and Summit 6, no
`
`estoppel under 35 U.S.C. § 317(e) shall attach to the HTC Entities. 35 U.S.C.
`
`317(a). Nor shall either the HTC Entities or Summit 6 be prejudiced in any other
`
`manner.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this filing to Deposit Account No. 20-1430.
`
`
`
`Respectfully submitted,
`
`Date: June 9, 2015
`
`/s/John Alemanni
`
`
`
`
`
`4
`
`
`
`U.S. Patent No. 7,765,482
`IPR2015-00806
`
`
`Date: June 9, 2015
`
`John C. Alemanni (Reg. No. 47,384)
`Michael Morlock (Reg. No. 62,245)
`KILPATRICK TOWNSEND &
` STOCKTON LLP
`Counsel for Petitioners
`HTC Corporation & HTC America, Inc.
`
`
`
`/s/Peter Ayers
`Peter J. Ayers (Reg. No. 38,374)
`John Shumaker (Reg. No. 52,223)
`Brian Mangum (Reg. No. 64,224)
`LEE & HAYES, PLLC
`Counsel for Patent Owner
`Summit 6 LLC
`
`
`
`5
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(4) and 42.205(b), the undersigned hereby
`
`certifies that a copy of this JOINT MOTION TO TERMINATE
`
`INVOLVEMENT OF THE HTC ENTITIES, has been served via electronic
`
`mail on June 9, 2015, upon the following:
`
`
`
`
`/s/ John Alemanni
`John C. Alemanni (Reg. No. 47,384)
`
`
`
`Peter J. Ayers
`peter@leehayes.com
`John Shumaker
`jshumaker@leehayes.com
`Brian Mangum
`brianm@leehayes.com
`LEE & HAYES, PLLC
`11501 Alterra Parkway, Suite 450
`Austin, TX 78758
`
`
`
`Date: June 9, 2015
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
