UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
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`v.
`
`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2015-01709
`Patent 7,525,484
`__________________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
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`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2015-01709
`Patent 7,525,484
`__________________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
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`I.
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`Statement of the Precise Relief Requested.
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74 and an email
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`authorizing this motion,1 Petitioners T-Mobile US, Inc., T-Mobile USA, Inc.,
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`TeleCommunication Systems, Inc., Ericsson Inc., and Telefonaktiebolaget LM
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`Ericsson (collectively “Petitioners”) and Patent Owner TracBeam, LLC (“Patent
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`Owner”) jointly request that the Board Terminate this Inter Partes Review of U.S.
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`Patent No. 7,525,484 (“the ‘484 patent”).
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`
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`II. Statement of Facts.
`Petitioners filed this Petition for Inter Partes Review on August 11, 2015,
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`
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`requesting review of certain claims the ‘484 patent.
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`This proceeding is still in its preliminary stages. The Board has yet to
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`decide whether to institute a trial.
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`1 Email from Maria Vignone, Paralegal Operations Manager, Patent Trial
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`and Appeal Board, to Sean Luner and others, respective counsel for Patent Owner
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`and Petitioners (November 17, 2015).
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`1
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`The T-Mobile Petitioners and Patent Owner are parties in a litigation
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`involving the ‘484 patent in the United States District Court for the Eastern District
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`of Texas, TracBeam, LLC v. T-Mobile US, Inc. et al., Case No. 6:14-cv-00678.2
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`On November 16, 2015, all Petitioners and Patent Owner executed a
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`Narrowing Agreement, in which they agreed to limit the issues in dispute in both
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`the District Court litigation and in multiple Inter Partes Reviews, by, among other
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`things, agreeing to file this Motion to Terminate.
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`Concurrent with this Joint Motion to Terminate in this proceeding, pursuant
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`to the Narrowing Agreement, the Patent Owner and Petitioners are also filing:
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`(a) Joint Motions to Terminate in the following proceedings:
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`• IPR2015-01682;
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`• IPR2015-01684; and
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`• IPR2015-01686;
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`(b) Joint Motions to Limit Petition in the following proceedings:
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`2 The District Court litigation also involves U.S. Patent Nos. 7,764,231,
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`7,298,327, and 8,032,153. Petitioners filed Petitions for Inter Partes Review
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`concerning each of these patents. See IPR2015-01681, IPR2015-01682, IPR2015-
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`01684, IPR2015-01686, IPR2015-01687, IPR2015-01709, IPR2015-01711,
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`IPR2015-01712, and IPR2015-01713.
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`2
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`
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`• IPR2015-01681 limited to claims 25 and 82;
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`• IPR2015-01687 limited to claims 17, 20, and 25;
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`• IPR2015-01708 limited to claims 1, 25, and 51;
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`• IPR2015-01711 limited to claim 27;
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`• IPR2015-01712 limited to claims 1, 2, 44, and 60; and
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`• IPR2015-01713 limited to claims 1, 3, and 15.
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`
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`III. Argument.
`A. Termination of this Inter Partes Review proceeding is
`Appropriate.
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`The parties respectfully submit that the Board should terminate this
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`proceeding for the following reasons:
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`(i) this proceeding is in the preliminary stages;
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`(ii) the parties have resolved their dispute as to all issues in this proceeding;
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`(iii) the issues addressed in this proceedings will be removed from the
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`District Court litigation between the parties;
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`(iv) other Motions to Terminate and Motions to Limit Petition are being filed
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`in the related IPRs involving the same parties;
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`(v) the parties agree that this inter partes review proceeding should be
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`terminated; and
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`3
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`(vi) under the Narrowing Agreement, Petitioners agreed that they will not
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`participate in this IPR proceeding if this Motion to Terminate is not
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`granted and the proceeding is instituted.
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`Narrowing the issues between the Petitioner and Patent Owner and terminating this
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`proceeding will serve to both conserve judicial resources and facilitate the Board’s
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`goal of resolving inter partes review in a just, speedy, and inexpensive manner. 37
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`C.F.R. § 42.1(b).
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`B. A Copy of the Narrowing Agreement is Provided.
`The Narrowing Agreement has been executed in writing. A true copy is
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`filed along with this Motion, as business confidential information pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74, as Exhibit 2001.
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`A Joint Request to File an Agreement as Business Confidential Information
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`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 is also being filed along with this
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`Motion.
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`Summary.
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`C.
`For the foregoing reasons, Petitioners and Patent Owner respectfully request
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`that the Board terminate this proceeding.
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`4
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`By:
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`Respectfully submitted,
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`
`
`/Sean Luner/
`Sean Luner,
`Registration No. 36,588
`DOVEL & LUNER, LLP
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
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`
`
`/s/ Bryan W. Oaks (with permission)
`Brian W. Oaks
`Reg. No. 44,981
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`BAKER BOTTS LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Phone: (512) 322-5470
`Fax: (512) 322-
`3621 brian.oaks@bakerbotts.com
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`Counsel for Petitioners
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`5
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`Date: November 24, 2015, 2015
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`CERTIFICATE OF FILING AND SERVICE
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`I hereby certify that a true and correct copy of the foregoing JOINT
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`MOTION TO TERMINATE PROCEEDINGS is being filed via PRPS and
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`served by electronic mail this 24th day of November, 2015 on counsel for
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`Petitioners as follows:
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`Brian W. Oaks
`BAKER BOTTS, LLP,
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Telephone (512) 322-5470
`Facsimile (512) 322-3621
`brian.oaks@bakerbotts.com
`
`Douglas M. Kubehl
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6486
`Facsimile (214) 661-4486
`doug.kubehl@bakerbotts.com
`
`Chad C. Walters
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6511
`Facsimile (214) 661-4511
`chad.walters@bakerbotts.com
`
`Ross G. Culpepper
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6543
`Facsimile (214) 661-4543
`6
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`ross.culpepper@bakerbotts.com
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`/Sean Luner/
`Sean Luner
`Registration No. 36,588
`DOVEL & LUNER, LLP
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
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`7
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`Date: November 24, 2015
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