`Filed November 3, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`AMX, LLC and Dell Inc.,
`Petitioner,
`
`v.
`
`ChriMar Systems, Inc.,
`Patent Owner.
`
`
`
`Case IPR2016-00569
`Patent 8,942,107 B2
`
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`MOTION TO TERMINATE PETITIONER AMX, LLC
`
`
`
`
`
`
`
`Case IPR2016-00569
`Patent 8,942,107 B2
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`
`
`Under 35 U.S.C. § 317(a), Petitioner AMX, LLC and Patent Owner, ChriMar
`
`Systems, Inc., jointly request that the Board terminate Petitioner AMX, LLC from this
`
`proceeding. AMX and Chrimar have reached a settlement that resolves their dispute
`
`concerning the patent at issue in this proceeding. Petitioner Dell Inc. is not a party to
`
`the settlement and will remain a petitioner in this proceeding.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`
`
`1.
`
`U.S. Patent No. 8,942,107 (“the 107 patent”) is the subject of this
`
`proceeding and is one of four patents asserted against AMX in Civil Action 6:2015-
`
`cv-00164 pending before the United States District Court for the Eastern District of
`
`Texas.
`
`2.
`
`On August 10, 2016, the Board instituted an inter partes review on claims
`
`1, 5, 31, 43, 53, 58, 70, 72, 75, 83, 84, 103, 104, 111, 123, and 125 of the 107 patent.
`
`(Paper 19 at 31.) Patent Owner’s response is due November 22, 2016. (Paper 23 at 1.)
`
`3.
`
`On November 2, 2016, AMX and Chrimar reached a settlement that
`
`resolves their dispute with respect to several patents, including the 107 patent. Dell is
`
`not a party to the settlement agreement. In accordance with 37 C.F.R. § 42.74(b),
`
`AMX and Chrimar submit a true and correct copy of the settlement agreement as
`
`Exhibit 1041 with the designation “Board Only.”1 Pursuant to the settlement
`
`
`1 Together with this motion, the parties file a joint motion requesting that the Board
`
`1
`
`
`
`Case IPR2016-00569
`Patent 8,942,107 B2
`
`agreement, the parties have agreed to seek termination of AMX from this proceeding.
`
`II.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`Termination of Petitioner AMX from this proceeding is proper. The
`
`proceeding is in a relatively early stage, Patent Owner has yet to file a response, and
`
`the Board has not yet decided the merits of this proceeding. As required under 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), AMX and Chrimar have provided a true and
`
`correct copy of their settlement agreement (Exhibit 1041), and there is no other
`
`agreement, oral or written, between AMX and Chrimar made in connection with, or
`
`in contemplation of, the termination of AMX from this proceeding. This agreement
`
`settles all litigation, including this proceeding, between AMX and Chrimar with
`
`respect to the 107 patent. Accordingly, the Board should terminate Petitioner AMX
`
`from this proceeding.
`
`
`November 3, 2016
`
`Respectfully submitted,
`/Brent A. Hawkins/
`Brent A. Hawkins (Reg. 44,146)
`
`Attorney for Petitioner
`
`/Justin S. Cohen/
`Justin S. Cohen (Reg. 59,964)
`
`Attorney for Patent Owner
`
`treat Exhibit 1041 as business confidential information, keep it separate from the files
`of the involved patent, and make it available only to the entities and under the
`conditions identified in 37 C.F.R. § 42.74(c).
`
`2
`
`
`
`Case IPR2016-00569
`Patent 8,942,107 B2
`
`
`CERTIFICATE OF SERVICE
`
`I certify that I sent a copy of the foregoing MOTION TO TERMINATE
`
`PETITIONER AMX, LLC on November 3, 2016 by electronic mail to the attorneys of
`
`record for the Patent Owner at the following e-mail addresses:
`
`justin.cohen@tklaw.com
`
`hoffmann@reising.com
`
`/Hersh H. Mehta/
`Hersh H. Mehta (Reg. 62,336)
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