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UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`UMICORE AG & CO. KG,
`
`Petitioner
`v.
`
`BASF CORPORATION
`
`Patent Owner
`
`Case No. IPR2016-00613
`U.S. Patent No. 9,039,982 to Patchett et al.
`_________________________________________________________________
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C.
`§ 317 and 37 C.F.R. § 42.74
`_________________________________________________________________
`
`
`
`
`
`
`
`
`
`

`
`Pursuant to 35 U.S.C. 317, 37 C.F.R. §§42.72 and 42.74, and the
`
`authorization provided by the Board on August 30, 2016, Petitioner Umicore AG
`
`& Co. KG (“Umicore” or “Petitioner”) and Patent Owner BASF Corp. (“BASF” or
`
`“Patent Owner”) jointly move to terminate this inter partes review proceeding in
`
`view of the parties’ settlement of their dispute relating to U.S. Patent No.
`
`9,039,982 to Patchett et al. (“the ’982 patent”). The parties are filing, concurrently
`
`with the present motion, a true and complete copy of their written Settlement and
`
`License Agreement (“Settlement Agreement”) (Confidential Exhibit 1014). This
`
`Settlement Agreement completely settles the parties’ dispute relating to the ’982
`
`patent.
`
`The parties further jointly certify that there are no other agreements or
`
`understandings, oral or written, between Patent Owner and Petitioner, including
`
`any collateral agreements, made in connection with, or in contemplation of, the
`
`termination of the present proceeding as set forth in 35 U.S.C. § 317(b).
`
`The parties request that the Settlement Agreement be treated as business
`
`confidential information and kept separate from the file of this IPR. A joint
`
`request to treat the Settlement Agreement as business confidential information kept
`
`separate from the IPR file pursuant to 35 U.S.C. § 317(b) is being filed
`
`concurrently with this motion.
`
`1
`
`

`
`I.
`
`ARGUMENT
`
`A joint motion to terminate “must (1) include a brief explanation as to why
`
`termination is appropriate; (2) identify all parties in any related litigation involving
`
`the patents at issue; (3) identify any related proceedings currently before the
`
`Office, and (4) discuss specifically the current status of each such related litigation
`
`or proceeding with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26, at *2
`
`(P.T.A.B. July 28, 2014). These factors are addressed in turn below.
`
`A.
`
` Why Termination is Appropriate (Factor 1)
`Pursuant to 35 U.S.C. § 317(a), “[t]he Board expects that a proceeding will
`
`terminate after the filing of a settlement agreement, unless the Board has already
`
`decided the merits of the proceeding.” Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012). Here, IPR has not yet been instituted, no
`
`cross examination has occurred, no hearings have been conducted, and Patent
`
`Owner BASF has not yet filed its formal response. Termination is justified in view
`
`of the early stage of this proceeding and the absence of any continuing dispute
`
`between the parties concerning the ’982 patent.
`
`B.
`
`Identity and Status of Any Related Litigations (Factors 2 and 4)
`
`
`Petitioner and Patent Owner are not aware of any related litigations
`
`involving the ’982 patent.
`
`2
`
`

`
`C.
`
`
`
`Identity and Status of Any Related Proceedings Currently Before
`the Office (Factors 3 and 4)
`
`In addition to the present IPR, Petitioner has also filed two additional IPR
`
`petitions addressing patents related to the ’982 patent: (1) IPR2016-00610,
`
`involving U.S. Patent No. 8,899,023 (“the ’023 patent”) and (2) IPR2016-00612,
`
`involving U.S. Patent No. 9,032,709 (“the ’709 patent”). Petitioner and Patent
`
`Owner have also settled their disputes regarding the ’023 and ’709 patents, and
`
`along with this motion, have filed joint motions to terminate both the -00610 and -
`
`00612 proceedings.
`
`The ’023, ’709, and ’982 patents are also currently the subject of IPRs
`
`instituted in response to petitions filed by Johnson Matthey Inc. in Cases IPR2015-
`
`01265, -01266, and -01267. The Board held an oral hearing addressing the three
`
`cases on August 23, 2016. (See, e.g., IPR2015-01265, Trial Hearing Order, Paper
`
`No. 30.) A final written decision has not yet issued. Umicore is not a party to the -
`
`01265, -01266, and -01267 cases. And, the settlement between Umicore and
`
`Patent Owner has no bearing on the -01265, -01266, and -01267 cases.
`
`II. CONCLUSION
`For the foregoing reasons, the parties jointly and respectfully request that the
`
`instant proceeding be terminated.
`
`
`
`3
`
`
`
`
`
`

`
`Respectfully submitted,
`
`
`
`
`/ Elizabeth Gardner/
`Elizabeth Gardner (Reg. No. 36,519)
`Orrick, Herrington, & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`Tel: 212-506-5000
`Fax. 212-506-5151
`Email: egardner@orrick.com
`
`/ Anish R. Desai/
`Anish R. Desai (Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`Tel: 202-682-7000
`Email: anish.desai@weil.com
`
`4
`
`
`
`
`
`Dated:
`
`
`August 30, 2016
`
`
`
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on August 30, 2016, the foregoing
`
`JOINT MOTION TO TERMINATE was served via
`
`electronic mail, upon the following counsel of record:
`
`
`
`Elizabeth Gardner
`Richard L. DeLucia
`Orrick, Herrington, & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`egardner@orrick.com
`rdelucia@orrick.com
`
`/ Timothy J. Andersen / a
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7075
`timothy.andersen@weil.com
`
`5

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