`
`Paper 7
`
`Filed on behalf of: Unified Patents Inc.
`
`By:
`
`Jeff Toler
`Toler Law Group, PC
`8500 Bluffstone CV. Suite A201
`
`Austin, TX 78759
`Telephone:
`(512) 327-5515
`E—mail:
`jto1er@tlgiplaW.corn
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS INC.
`
`Petitioner
`
`V.
`
`FOZGO LLC
`
`Patent Owner
`
`IPR2016—0O454
`
`U.S. Patent No. 7,173,651
`Apparatus and System for Prompt Digital Photo
`Delivery and Archival
`
`JOINT MOTION TO TERMINATE UNDER 35 U.S.C. § 317(a)
`
`
`
`lPR20l6-00454
`
`Paper 7
`
`I.
`
`JOINT MOTION TO TERMINATE
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Unified Patents Inc. (“Unified”)
`
`and Patent Owner FOZGO LLC (“FOZGO”) jointly request termination of the Inter
`
`Partes Review of U.S. Patent 7,173,651, lPR20l6—O0454.
`
`On March 15, 2016, the Parties informed the Board of a settlement and
`
`requested authorization to file a joint motion to terminate the proceeding. The
`
`parties acknowledge that
`
`they have entered into a settlement agreement
`
`that
`
`contemplates the termination of the case prior to a decision on the merits.
`
`Unified filed its petition for inter partes review on January 11, 2016. FOZGO
`
`has not yet filed a Patent Owner Preliminary Response. The Board has not issued
`
`an institution decision regarding lPR2016-00454 and U.S. Patent 7,173,651.
`
`Because the Board has not decided the merits of the proceeding, “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. 48756, 48768 (Aug. 14,
`
`2012). Thus, termination of this IPR is appropriate.
`
`The parties have signed a written Settlement Agreement, and a copy shall be
`
`filed with this Office as business confidential information pursuant to 35 U.S.C. §
`
`317(b). As stated in 35 U.S.C. § 317(a), because Unified and FOZGO request this
`
`termination, no estoppel under 35 U.S.C. § 3l5(e) shall attach to Unified.
`
`
`
`IPR20 l 6~O0454
`
`Paper 7
`
`Ending this IPR early promotes the Congressional goal of establishing a
`
`more efficient patent system by limiting unnecessary and counterproductive costs
`
`by both the parties and the Board. See 77 Fed. Reg. 48,680 (Aug.l4, 2012).
`
`Permitting termination as
`
`to all parties provides certainty and fosters an
`
`environment that promotes settlements, creating a timely, cost-effective alternative
`
`to litigation.
`
`
`
`IPR20 16-00454
`
`Paper 7
`
`II. CONCLUSION
`
`Unified and FOZGO respectfully request termination of the Inter Partes
`
`Review of U.S. l’atent 7,173,651, IPR2016-00454. The USPTO is authorized to
`
`charge any fees or credit any overpayments to Deposit Account No. 50-2469.
`
`Respectfully submitted,
`By:
`‘A /4 gm
`Regist
`tion No. 58,342
`
`
`
`
`Back—U Counsel
`
`Jonathan Stroud
`
`Reg. No. 72,518
`jonathan@unifiedpatents.com
`Unified Patents, Inc.
`171 Main St. ‘#106
`
`Los Altos, CA 94022
`Telephone: (.650) 999-0455
`Fax: 650) 887-0349
`
`
`
` Lead Counsel
`
`Jeff Toler
`
`Reg. No. 38,342
`jto1er@t1giplaw.com
`Toler Law Group, PC
`8500 Bluffstone CV. Suite A201
`
`Austin, TX 78759
`Telephone: (512)327-5515
`Fax: 512 327-5575
`
`By: (K 8:”""M
`
`Registration No. 60,283
`
`
`
`
`
`
`
`
`8150 N. Central Expy, 10th Floor
`Dallas, Texas 75206
`Telephone: (214) 367-6000
`Fax: 214 367-6001
`
`8150 N. Central Expy, 10th Floor
`Dallas, Texas 75206
`Telephone: (214) 367-6000
`Fax: 650 367-6001
`
`Lead Counsel
`
`
`
`Gary Sorden
`Reg. No. 60,283
`gaiy.sorden@k1e1nchuk.co1n
`Kleinchuk LLP
`
`Back-U: Counsel
`
`Kirby "Drake
`Reg. No. 55,126
`kirby.d1'ake@k1emchul<.oo1n
`Klemchuk LLP
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the Patent Owner has been served by
`
`providing a copy of this Joint Motion to Terminate Via electronic mail on March
`
`IPR2016-00454
`
`Paper 7
`
`18, 2016, to the following practitioners:
`
`Gary Sorden
`Klernchuk LLP
`8150 N. Central Expy, 10“: Floor
`Dallas, Texas 75206
`(214) 367-6000
`gary.sorden@kle1nchuk.co1n
`
`Kirby Drake
`Klernchuk LLP
`8150 N. Central Expy, 10“: Floor
`Dallas, Texas 75206
`(214) 367-6000
`kirby.dra1<e@l<lemchul<.corn
`
`Dated: March 18, 2016
`
`Respectfully
`
`Lead Counsel
`
`Jeff Toler
`
`Reg. No. 38,342
`jto1er@t1gip1aw.com
`Toler Law Group, PC
`8500 Bluffstone CV. Suite A201
`
`Austin, TX 78759
`Telephone: (512) 327-5515
`Fax: (512) 327-5575
`
`By:
`Regis ation No. 38,342
`
`Back—Up Counsel
`Jonathan Stroud
`
`Reg. No. 72,518
`jonathan@unifiedpatents.co1n
`Unified Patents, Inc.
`171 Main St. #106
`
`Los Altos, CA 94022
`Telephone: (650) 999-0455
`Fax: (650) 887-0349
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