UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`
`Patent No. 7,525,484
`
`
`Inter Partes Review No. IPR2015-01697
`
`
`TRACBEAM, LLC AND APPLE INC.’S
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(A)
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`
`Patent No. 7,525,484
`
`
`Inter Partes Review No. IPR2015-01697
`
`
`TRACBEAM, LLC AND APPLE INC.’S
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(A)
`
`
`
`
`
`
`IPR2015-01697
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 & 42.74, TracBeam,
`
`LLC (“Patent Owner”) and Apple Inc. (“Petitioner”) jointly move for termination
`
`of the inter partes review of U.S. Patent No. 7,525,484 (“the ’484 Patent”) in the
`
`above-captioned Case No. IPR2015-01697. This Joint Motion was authorized by
`
`the Board pursuant to its e-mail dated April 1, 2016.
`
`Petitioner filed its petition for inter partes review of the ’484 Patent on
`
`August 12, 2015 (Paper 2). Patent Owner filed a preliminary response on
`
`November 23, 2015 (Paper 6). On February 17, 2016, the Board issued its
`
`Institution Decision (Paper 8). The parties have since settled their dispute, and
`
`agreed to terminate this inter partes review of the ’484 Patent.
`
`The parties’ Settlement and License Agreement has been made in writing
`
`and was executed by Patent Owner on March 11, 2016, and by Petitioner on March
`
`14, 2016. In accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true
`
`copy of the Settlement and License Agreement is being submitted concurrently
`
`herewith as Exhibit 1011. The parties certify that there are no collateral
`
`agreements or understandings made in connection with, or in contemplation of, the
`
`termination of this inter partes review, and that the Settlement and License
`
`Agreement reflects the final settlement and resolution of all disputes between
`
`Patent Owner and Petitioner regarding this inter partes review.
`
`1
`
`
`
`IPR2015-01697
`
`Submitted concurrently herewith is a request by Patent Owner and Petitioner
`
`that the Settlement and License Agreement be treated as business confidential
`
`information, be kept separate from the file of the involved patents, and be made
`
`available only to Federal Government agencies on written request, or to any person
`
`on a showing of good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c).
`
`On August 8, 2014, Patent Owner filed a patent infringement lawsuit against
`
`Petitioner, alleging infringement of the ’484 Patent and three other patents (U.S.
`
`Patent Nos. 7,298,327, 8,032,153, and 7,764,231). The lawsuit is captioned
`
`TracBeam, LLC v. Apple Inc., Case No. 6:14-cv-680 (E.D. Tex.) (“the Apple
`
`lawsuit”). The Apple lawsuit is in the process of being dismissed with prejudice,
`
`and there is no litigation contemplated in the foreseeable future between Patent
`
`Owner and Petitioner in view of the Settlement and License Agreement.
`
`While there are three other still-pending IPR proceedings between Patent
`
`Owner and Petitioner (on the three other patents in suit in the Apple lawsuit1), the
`
`1 In Case No. IPR2015-01695, the Board instituted inter partes review of U.S.
`
`Patent No. 7,298,327 on February 8, 2016. In Case No. IPR2015-01701, the Board
`
`instituted inter partes review of U.S. Patent No. 8,032,153 on February 8, 2016. In
`
`Case No. IPR2015-01703, the Board instituted inter partes review of U.S. Patent
`
`No. 7,764,231 on February 19, 2016.
`
`2
`
`
`
`IPR2015-01697
`
`parties are concurrently seeking to jointly terminate those proceedings as well
`
`pursuant to the Settlement and License Agreement.
`
`The ’484 Patent is the subject of pending litigation and IPR proceedings not
`
`involving Petitioner here. In TracBeam, LLC v. T-Mobile US, Inc. et al., Case No.
`
`6:14-cv-678 (E.D. Tex.) (“the T-Mobile lawsuit”), TracBeam has asserted the ’484
`
`Patent against certain entities that are unrelated to Petitioner. The ’484 Patent is
`
`currently the subject of inter partes review in Case Nos. IPR2015-01708 and
`
`IPR2015-01711, based upon August 11, 2015 petitions filed by T-Mobile US, Inc.,
`
`T-Mobile USA, Inc., TeleCommunication Systems, Inc., Ericsson Inc., and
`
`Telefonaktiebolaget LM Ericsson, which were granted on February 8, 2016. Those
`
`same petitioners recently filed another petition for inter partes review of the ’484
`
`Patent on March 8, 2016, and their petition in Case No. IPR2016-00728 is pending.
`
`Again, Petitioner here is not involved in any of the above-described proceedings
`
`(i.e., the pending T-Mobile lawsuit or in Case Nos. IPR2015-01708, IPR2015-
`
`01711, and IPR2016-00728).
`
`No other petitioners remain in this inter partes review, and no final written
`
`decision on the merits has been entered. For at least these reasons, termination of
`
`this inter partes review is proper under 35 U.S.C. § 317(a) and 37 C.F.R.
`
`§ 42.74(a). Should this joint motion to terminate be denied, Petitioner would not
`
`continue to participate in this proceeding.
`
`3
`
`
`
`As stated in 35 U.S.C. § 317(a) and 37 C.F.R. § 42.73(d), because Patent
`
`Owner and Petitioner jointly request this termination, no estoppel under 35 U.S.C.
`
`IPR2015-01697
`
`§ 315(e) shall attach to the Petitioner.
`
`Dated: April 5, 2016
`
`
`
`Dated: April 5, 2016
`
`
`
`
`
`Respectfully submitted,
`
`By /Sean Luner /
`Sean Luner
`Registration No. 36,588
`DOVEL & LUNER
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Telephone (310) 656-7066
`sean@dovel.com
`
`Attorneys for Patent Owner TracBeam,
`LLC
`
`Respectfully submitted,
`
`By /David L. Fehrman/
`David L. Fehrman
`Registration No.: 28,600
`Martin M. Noonen
`Registration No.: 44,264
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`P: (213) 892-5601
`F: (213) 892-5454
`
`Attorneys for Petitioner Apple Inc.
`
`
`
`
`
`
`4
`
`
`
`IPR2015-01697
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the attached TRACBEAM, LLC AND APPLE INC.’S
`
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35 U.S.C.
`
`§ 317(a) was served as of the below date by electronic mail, on the Petitioner at the
`
`following correspondence address:
`
`David L. Fehrman
`dfehrman@mofo.com
`Martin M. Noonen
`mnoonen@mofo.com
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`
`By /Sean Luner/
`Sean Luner
`
`
`
`5
`
`
`
`Dated: April 5, 2016
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