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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SMART MODULAR TECHNOLOGIES INC.
`Petitioner
`v.
`JAMES B. GOODMAN
`Patent Owner
`
`Case No. IPR2015-01675
`Patent 6,243,315
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C § 317
`
`
`VIA PRPS
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`The Parties have settled their litigation concerning U.S. Patent No.
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`6,243,315 and the Court issued an order requiring the Parties to terminate the inter
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`IPR2015-01675
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`partes review. Ex. 1018.
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`I. Brief Statement Of Relief Requested
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`Pursuant to 35 U.S.C. § 317, the Parties jointly request termination of the
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`present inter partes review proceeding, Case No. IPR2015-01675, with respect to
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`both Petitioner and Patent Owner, in light of the Parties’ resolution of their
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`disputes relating to U.S. Patent No. 6,243,315.
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`II. Authorization To File A Joint Motion To Terminate
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`On August 24, 2016, Petitioner and Patent Owner advised the Board that
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`they have reached a settlement and requested authorization to file a joint motion to
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`terminate the present inter partes review proceeding. On August 26, 2016, the
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`Board authorized the filing of a joint motion to terminate the present inter partes
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`review proceeding. Paper 15.
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`III. Argument In Support Of Termination Of Proceeding
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`The applicable statute provides that an inter partes review “shall be
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`terminated with respect to any petitioner upon the joint request of the petitioner
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`and the patent owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.” 35 U.S.C. § 317(a). The Parties have
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`settled their disputes involving the ’315 patent and have agreed to terminate the
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`1
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`IPR2015-01675
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`present inter partes review proceeding. Pursuant to 35 U.S.C. § 317(b), the Parties
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`are filing, concurrently herewith, a true copy of their written settlement agreement
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`as Ex.1019B.
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`Further, the present inter partes review proceeding is still in its early stages.
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`The Board instituted the present inter partes review proceeding on February 11,
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`2016, and Patent Owner filed its patent owner’s response on March 3, 2016. See
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`Scheduling Order, Paper 7 at page 6. The Board has not decided the merits of the
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`present inter partes review proceeding.
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`In light of the foregoing, termination of the present inter partes review
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`proceeding with respect to Petitioner and Patent Owner is appropriate.
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`IV. Conclusion
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`For the foregoing reasons, the Parties jointly and respectfully request
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`termination of the present inter partes review, Case No. IPR2015-01675, with
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`respect to both Petitioner and Patent Owner. Because the Parties jointly request
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`termination as to Petitioner, no estoppel under 35 U.S.C. §315(e) shall attach to
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`Petitioner under 35 U.S.C. § 317(a).
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`
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`Dated: September 13, 2016
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`Respectfully submitted,
`s/Michael F. Heafey/
`Michael F. Heafey
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`2
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`IPR2015-01675
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`Registration No. 38,178
`King & Spalding LLP
`601 South California Avenue
`Palo Alto, California 94304
`(650) 422-6719 (telephone)
`(650 422-6800 (facsimile)
`mheafey@kslaw.com (email)
`Counsel for Petitioner
`
`Respectfully submitted,
`
`
`
`s/David Fink/
`David Fink
`Registration No. 25,972
`Fink & Johnson
`7519 Apache Plume
`Houston, TX 77071
`Tel. 713 729-4991
`Fax: 713 729-4951
`Email: texascowboy6@gmail.com
`Counsel for Patent Owner
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`
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`Dated: September 13, 2016
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`3
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`IPR2015-01675
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`Certificate Of Service In Compliance With 37 C.F.R. § 42.6(e)(4)
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`The undersigned certifies that a complete copy of this JOINT MOTION TO
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`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C § 317 was served via
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`email on Counsel for Patent Owner in this proceeding:
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`David Fink
`Fink & Johnson
`7519 Apache Plume
`Houston, TX 77071
`Admission No. 299869
`Tel. 713 729-4991
`Fax: 713 729-4951
`Email: texascowboy6@gmail.com
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`via Electronic Mail, on September 13, 2016.
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`
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`s/Michael F. Heafey/
`Michael F. Heafey
`Registration No. 38,178
`King & Spalding LLP
`601 South California Avenue
`Palo Alto, California 94304
`(650) 422-6719 (telephone)
`(650) 422-6800 (facsimile)
`mheafey@kslaw.com (email)
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`DMSLIBRARY01\29092246.v3
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