UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`WAVES AUDIO, LTD
`Petitioner
`v.
`ANDREA ELECTRONICS
`CORPORATION
`Patent Owner
`
`
`
`Case: IPR2016-00459
`U.S. Patent No. 6,363,345
`
`
`
`PARTIES’ JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner, Waves Audio, Ltd.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(“Waves”) and Patent Owner, Andrea Electronics Corp. (“Andrea”), jointly
`
`request termination of this inter partes review of U.S. Patent No. 6,363,345,
`
`Case No. IPR2016-00459.
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`WAVES AUDIO, LTD
`Petitioner
`v.
`ANDREA ELECTRONICS
`CORPORATION
`Patent Owner
`
`
`
`Case: IPR2016-00459
`U.S. Patent No. 6,363,345
`
`
`
`PARTIES’ JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner, Waves Audio, Ltd.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(“Waves”) and Patent Owner, Andrea Electronics Corp. (“Andrea”), jointly
`
`request termination of this inter partes review of U.S. Patent No. 6,363,345,
`
`Case No. IPR2016-00459.
`
`
`
`
`
`
`
`I.
`
`Termination of This Proceeding Is Appropriate
`
`Termination of this proceeding by the PTAB is appropriate. This case
`
`is still in the preliminary proceeding stage, the inter partes review trial has
`
`not yet been instituted, and no motions or petitions are outstanding in this
`case. Termination with respect to Petitioner is proper under 35 U.S.C. §
`
`317(a) because the parties are jointly requesting termination and the Office
`
`has not yet “decided the merits of the proceeding before the request for
`
`termination is filed.” Further, on March 3, 2016, Waves and Andrea entered
`
`into a Settlement Agreement (a true copy of which is filed concurrently as
`
`Ex. 2001). Thus, termination of this proceeding is appropriate because (i) the
`
`case is in the preliminary proceeding stage, (ii) the parties have settled their
`
`dispute, and (iii) the parties have agreed to jointly move to terminate this inter
`
`partes review proceeding.
`
`II.
`
`Status of Related Matters
`
`Andrea has asserted the ‘345 Patent against multiple companies in
`
`the Eastern District of New York and the International Trade Commission
`
`(“ITC”). The ITC Investigation, Certain Audio Processing Hardware and
`
`Software and Products Containing Same, Inv. No. 337-TA-949, filed on
`
`February 9, 2015, against Realtek Semiconductor Corp., Acer Inc., Acer
`
`America Corp., ASUS Computer International, ASUSTeK Computer Inc.,
`
`
`
`Dell Inc., Hewlett Packard Co, Lenovo Holding Co., Inc., Lenovo (United
`
`States) Inc., Toshiba Corp., and Toshiba America Information Systems,
`
`Inc., is currently pending.
`
`The following cases were filed on July 25, 2014, all of which are
`
`stayed pending the resolution of the ITC Investigation.
`
`• Andrea Electronics Corporation v. Lenovo Group Ltd. et al, 2:14-cv-
`
`04489
`
`• Andrea Electronics Corporation v. Toshiba Corporation et al, 2:14-cv-
`
`04492
`
`The following cases asserting the ’607 Patent were filed on January 14,
`
`2015 and are also stayed pending the resolution of the ITC Investigation.
`
`• Andrea Electronics Corporation v. Dell Inc., 2:15-cv-00209
`
`• Andrea Electronics Corporation v. ASUSTeK Computer Inc. et al,
`
`2:15-cv-00214
`
`III. Settlement Agreement
`As required by 35 U.S.C. § 317(b), a true and correct copy of the
`Settlement Agreement is being filed with the Patent Office. The parties
`
`desire that the Settlement Agreement be maintained as business confidential
`
`information under 37 C.F.R. §42.74(c) and a separate joint request to that
`
`effect is being filed on this date. In accordance with 35 U.S.C. § 317(a), no
`
`
`
`estoppel under 35 U.S.C. § 315(e) shall attach to Waves because Waves and
`
`Andrea jointly request termination.
`
`Therefore,
`
`the parties respectfully request
`
`termination of
`
`this
`
`proceeding.
`
`Respectfully submitted,
`
`Date: March 8, 2016 By: / George S. Haight IV /
`
`
`George S. Haight IV, Reg. No. 54,146,
`Pepper Hamilton LLP
`125 High Street
`19th Floor High Street Tower
`Boston, MA 02110
`(617) 204-5165 (telephone)
`(617) 204-5150 (facsimile)
`
`
`
`Andy H. Chan, Reg. No. 56,893
`Pepper Hamilton LLP
`333 Twin Dolphin Drive
`Suite 400
`Redwood City, CA 94065
`(650) 802-3602 (telephone)
`(650) 802-3650 (facsimile)
`
`Counsel for Andrea Electronics
`Corporation
`
`
`
`
`
`
`
`Date: March 8, 2016 By:
`
`
`
`
`/ J. Scott Denko /
`J. Scott Denko (Reg. No. 37,606)
`Patrick Stellitano (Reg. No. 42,169)
`DENKO LAUFF LLP
`3811 Bee Caves Road, Ste. 204
`Austin, Texas 78746
`Telephone: (512) 906-2074
`Facsimile: (512) 906-2075
`denko@dcllegal.com
`Waves-Andrea-ITC@dcllegal.com
`
`Counsel for Waves Audio Ltd.
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
`
`PARTIES’ JOINT MOTION TO TERMINATE PROCEEDING PURSUANT
`
`TO 35 U.S.C. § 317 on the Parties by filing this document through the Patent
`
`Review Processing System as well as delivering a copy via electronic mail to the
`
`denko@dcllegal.com
`Waves-Andrea-ITC@dcllegal.com
`
`
`
`chana@pepperlaw.com
`haightg@pepperlaw.com
`lil@pepperlaw.com
`schultz@pepperlaw.com
`
`following address:
`
`
`
`J. Scott Denko (Reg. No. 37,606)
`Patrick Stellitano (Reg. No. 42,169)
`DENKO LAUFF LLP
`3811 Bee Caves Road, Ste. 204
`Austin, Texas 78746
`Telephone: (512) 906-2074
`Facsimile: (512) 906-2075
`Counsel for Waves Audio Ltd.
`
`Andy H. Chan
`George S. Haight
`Yue (Lily) Li
`Andrew Schultz
`Pepper Hamilton LLP
`333 Twin Dolphin Drive
`Suite 400
`Redwood City, CA 94065
`(650) 802-3602 (telephone)
`(650) 802-3650 (facsimile)
`
`
`
`
`
`
`Respectfully submitted,
`
`/ George S. Haight IV /
`George S. Haight IV, Reg. No. 54,146,
`Pepper Hamilton LLP
`125 High Street
`19th Floor High Street Tower
`Boston, MA 02110
`(617) 204-5165 (telephone)
`(617) 204-5150 (facsimile)
`
`
`
` Date:March, 8 2016 By:
`
`
`
`
`Date: March 8, 2016 By:
`
`
`
`
`Andy H. Chan, Reg. No. 56,893
`Pepper Hamilton LLP
`333 Twin Dolphin Drive
`Suite 400
`Redwood City, CA 94065
`(650) 802-3602 (telephone)
`(650) 802-3650 (facsimile)
`
`Counsel for Andrea Electronics
`Corporation
`
`
`
`/ J. Scott Denko /
`J. Scott Denko (Reg. No. 37,606)
`Patrick Stellitano (Reg. No. 42,169)
`DENKO LAUFF LLP
`3811 Bee Caves Road, Ste. 204
`Austin, Texas 78746
`Telephone: (512) 906-2074
`Facsimile: (512) 906-2075
`denko@dcllegal.com
`Waves-Andrea-ITC@dcllegal.com
`
`Counsel for Waves Audio Ltd.
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
