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