`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`UMICORE AG & CO. KG,
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`Petitioner
`v.
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`BASF CORPORATION
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`Patent Owner
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`Case No. IPR2016-00613
`U.S. Patent No. 9,039,982 to Patchett et al.
`_________________________________________________________________
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C.
`§ 317 and 37 C.F.R. § 42.74
`_________________________________________________________________
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`Pursuant to 35 U.S.C. 317, 37 C.F.R. §§42.72 and 42.74, and the
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`authorization provided by the Board on August 30, 2016, Petitioner Umicore AG
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`& Co. KG (“Umicore” or “Petitioner”) and Patent Owner BASF Corp. (“BASF” or
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`“Patent Owner”) jointly move to terminate this inter partes review proceeding in
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`view of the parties’ settlement of their dispute relating to U.S. Patent No.
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`9,039,982 to Patchett et al. (“the ’982 patent”). The parties are filing, concurrently
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`with the present motion, a true and complete copy of their written Settlement and
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`License Agreement (“Settlement Agreement”) (Confidential Exhibit 1014). This
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`Settlement Agreement completely settles the parties’ dispute relating to the ’982
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`patent.
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`The parties further jointly certify that there are no other agreements or
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`understandings, oral or written, between Patent Owner and Petitioner, including
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`any collateral agreements, made in connection with, or in contemplation of, the
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`termination of the present proceeding as set forth in 35 U.S.C. § 317(b).
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`The parties request that the Settlement Agreement be treated as business
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`confidential information and kept separate from the file of this IPR. A joint
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`request to treat the Settlement Agreement as business confidential information kept
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`separate from the IPR file pursuant to 35 U.S.C. § 317(b) is being filed
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`concurrently with this motion.
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`1
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`I.
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`ARGUMENT
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`A joint motion to terminate “must (1) include a brief explanation as to why
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`termination is appropriate; (2) identify all parties in any related litigation involving
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`the patents at issue; (3) identify any related proceedings currently before the
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`Office, and (4) discuss specifically the current status of each such related litigation
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`or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26, at *2
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`(P.T.A.B. July 28, 2014). These factors are addressed in turn below.
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`A.
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` Why Termination is Appropriate (Factor 1)
`Pursuant to 35 U.S.C. § 317(a), “[t]he Board expects that a proceeding will
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`terminate after the filing of a settlement agreement, unless the Board has already
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`decided the merits of the proceeding.” Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48768 (Aug. 14, 2012). Here, IPR has not yet been instituted, no
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`cross examination has occurred, no hearings have been conducted, and Patent
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`Owner BASF has not yet filed its formal response. Termination is justified in view
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`of the early stage of this proceeding and the absence of any continuing dispute
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`between the parties concerning the ’982 patent.
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`B.
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`Identity and Status of Any Related Litigations (Factors 2 and 4)
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`Petitioner and Patent Owner are not aware of any related litigations
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`involving the ’982 patent.
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`2
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`C.
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`Identity and Status of Any Related Proceedings Currently Before
`the Office (Factors 3 and 4)
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`In addition to the present IPR, Petitioner has also filed two additional IPR
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`petitions addressing patents related to the ’982 patent: (1) IPR2016-00610,
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`involving U.S. Patent No. 8,899,023 (“the ’023 patent”) and (2) IPR2016-00612,
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`involving U.S. Patent No. 9,032,709 (“the ’709 patent”). Petitioner and Patent
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`Owner have also settled their disputes regarding the ’023 and ’709 patents, and
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`along with this motion, have filed joint motions to terminate both the -00610 and -
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`00612 proceedings.
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`The ’023, ’709, and ’982 patents are also currently the subject of IPRs
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`instituted in response to petitions filed by Johnson Matthey Inc. in Cases IPR2015-
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`01265, -01266, and -01267. The Board held an oral hearing addressing the three
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`cases on August 23, 2016. (See, e.g., IPR2015-01265, Trial Hearing Order, Paper
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`No. 30.) A final written decision has not yet issued. Umicore is not a party to the -
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`01265, -01266, and -01267 cases. And, the settlement between Umicore and
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`Patent Owner has no bearing on the -01265, -01266, and -01267 cases.
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`II. CONCLUSION
`For the foregoing reasons, the parties jointly and respectfully request that the
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`instant proceeding be terminated.
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`3
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`Respectfully submitted,
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`/ 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
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`/ 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
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`4
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`Dated:
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`August 30, 2016
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on August 30, 2016, the foregoing
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`JOINT MOTION TO TERMINATE was served via
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`electronic mail, upon the following counsel of record:
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`
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`Elizabeth Gardner
`Richard L. DeLucia
`Orrick, Herrington, & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`egardner@orrick.com
`rdelucia@orrick.com
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`/ 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
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