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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
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`Case No.: IPR2016-00753
`Patent No.: 7,752,649
`For: Signal Processing Apparatus and Methods
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Apple Inc. (“Apple”) and Patent
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`Owner Personalized Media Communications, LLC (“PMC”) (collectively, the
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`“Parties”) jointly request termination of this inter partes review (IPR) of U.S. Pat.
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`7,752,649 (the “’649 Patent”), Case No. IPR2016-00753. In accordance with 37
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`C.F.R. § 42.20(b), the parties sought and received authorization from the Board to
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`file this motion on March 3, 2017. Paper 18.
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`I.
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`GOOD CAUSE EXISTS TO DISMISS THE PETITION AND
`TERMINATE THE ABOVE-CAPTIONED IPR
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`The Parties have resolved their disputes with regard to the ’649 Patent. The
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`Parties’ agreement with regard to the ’649 Patent is memorialized in the document
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`filed concurrently herewith as Confidential Exhibit 1029. Termination of this
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`proceeding is proper because the IPR is in its early stages. The Board has not
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`“decided the merits of the proceeding before the request for termination is filed.”
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`See 35 U.S.C. § 317(a); 77 Fed. Reg. 48768 (“The Board expects that a proceeding
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`will terminate after filing of a settlement agreement, unless the Board has already
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`decided the merits of the proceeding.”). Though this IPR has been instituted and
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`Patent Owner has filed its Patent Owner Response, Petitioner has not yet filed its
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`Reply, and the Board has not yet decided the merits of the proceeding at the time
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`this motion for termination is filed. The Parties submit that dismissal of the
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`Petition in the above-captioned IPR will preserve the Board’s and the parties’
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`resource and relieve the Board of the substantial time and resources required to
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`consider the merits and to issue an institution decision. See 37 C.F.R. § 42.1(b).
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`Lastly, dismissal of the Petition and termination of the above-captioned IPR is a
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`just and fair resolution.
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`II.
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`IDENTIFICATION OF PARTIES
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`This IPR Petition is related to a lawsuit filed in the Eastern District of Texas,
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`Personalized Media Communications LLC. V. Apple Inc., Case No. 2:15-cv-01366
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`(EDTX). The Parties have resolved their disputes with regard to the ’649 Patent in
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`that district court litigation and have filed a joint stipulation of dismissal of all of
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`the Parties’ claims and counterclaims that specifically relate to the ’649 Patent.
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`The district court case has been stayed pending resolution of the inter partes
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`review of U.S. Patent Nos. 8,559,635 and 8,191,091. See Dkt. No. 355.
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`U.S. Patent No. 7,752,649 was also asserted in Personalized Media
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`Communications, LLC v. Top Victory Electronics (Taiwan) Co. Ltd. et al., C.A.
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`No. 2:15-cv-1206 (E.D. Tex.), which has been terminated; Personalized Media
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`Communications, LLC v. Funai Electric Co., Ltd. et al., C.A. No. 2:16-cv-105
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`(E.D. Tex.), which is pending; and Personalized Media Communications, LLC v.
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`Samsung Electronics America, Inc., et al., Civil Action No. 2:15-cv-01754, which
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`has been dismissed.
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`III. RELATED PROCEEDINGS BEFORE THE USPTO
`Petitions for IPR of the ’649 Patent was also filed in Vizio, Inc. v.
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`Personalized Media Communications, LLC, IPR2017-00141, -00142 and in
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`Samsung Electronics Co., Ltd. v. Personalized Media Communications, LLC,
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`IPR2017-00289 and IPR2017-00290. The parties in these IPRs jointly filed
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`motions to terminate. The Board granted the parties’ joint motions and terminated
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`these IPRs.
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`In addition to the foregoing, the following IPR petitions are related to the
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`current IPR petition and/or the related litigation: IPR2016-00754 (U.S. Patent No.
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`8,559,635) (Trial Instituted); Case No. IPR2016-00755 (U.S. Patent No. 8,191,091
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`(Trial Instituted); and IPR2016-01520 (U.S. Patent No. 8,559,635 (Trial
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`Instituted). The Parties are unaware of any other matter before the USPTO that
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`would be affected by the termination of this proceeding.
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`IV. CONCLUSION
`For all of these reasons, the Parties respectfully request that the Board
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`terminate this IPR.
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`Date: March 9, 2017
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`By ___/s/ Marcus E. Sernel___
`Marcus E. Sernel
`Registration No. 55,606
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`(312) 862-2000
`Attorney for Apple
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`Respectfully submitted,
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`By ___/s/ Douglas J. Kline___
`Douglas J. Kline
`Registration No. 35,574
`GOODWIN PROCTER LLP
`53 State Street
`Boston, MA 02109
`(617) 570-1000
`Attorney for PMC
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`3
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`APPENDIX - PETITIONER’S EXHIBIT LIST
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`Description
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`Exhibit
`No.
`1001 Declaration of Charles Neuhauser Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,752,649.
`1002 U.S. Patent No. 7,752,649 to Harvey, et al.
`1003 U.S. Patent No. 4,789,895 to Mustafa, et al.
`1004 U.S. Patent No. 4,215,369 to Iijima.
`1005 U.S. Patent No. 4,536,791 to Campbell, et al.
`1006 U.S. Patent No. 4,302,775 to Widergren, et al.
`1007 U.S. Patent No. 4,694,490 to Harvey, et al.
`Personalized Media Communications LLC v. Zynga, Inc., C.A. No.
`1008
`2:12-cv-68-JRG-RSP, 2013 WL 4630447 (E.D.T.X. Aug. 28, 2013).
`1009 U.S. Patent Appl. No. 08/449,097: 8/27/1996 Non-Final Rejection.
`1010 U.S. Patent Appl. No. 08/449,097: 1/27/1997 Applicant Arguments and
`Remarks Made in an Amendment.
`1011 U.S. Patent Appl. No. 08/449,097: 4/2/1998 Non-Final Rejection.
`1012 U.S. Patent Appl. No. 08/449,097: 10/2/1998 Amendment.
`1013 U.S. Patent Appl. No. 08/449,097: 4/6/1999 Claims.
`1014 U.S. Patent Appl. No. 08/449,097: 12/2/2009 Ex Parte Quayle Action.
`1015 U.S. Patent Appl. No. 08/449,097: 2/1/2010 Notice of Allowance.
`1016 U.S. Patent Appl. No. 08/449,097: 2/1/2010 Index of Claims.
`1017 Continuity Data of U.S. Patent Appl. No. 07/096,096.
`Intel P8748H/P8749H/8048AH/8035AHL/8049AH/8039AHL/8050AH/
`1018
`8040AHL HMOS Single-Component -Bit Microcontroller Datasheet,
`Aug. 1989, Section 1, pp. 27-39.
`Plaintiff’s Disclosures Under P.R. 3-1, Personalized Media
`Communications, LLC. v. Apple Inc., C.A. No. 2:15-cv-01366-JRG-RSP
`(E.D.T.X. Nov. 24, 2015).
`Plaintiff’s Identification of Claim Terms Requiring Construction,
`Personalized Media Communications, LLC. v. Apple Inc., C.A. No.
`2:15-cv-01366-JRG-RSP (E.D.T.X. Jan. 27, 2016).
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`1019
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`1020
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`4
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`Description
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`Exhibit
`No.
`1021 Plaintiff’s Joint Claim Construction Submission Exhibit A, Personalized
`Media Communications, LLC. v. Amazon.com, Inc., C.A. No. 1:13-cv-
`01608-RGA (D. Del. Sept. 23, 2014).
`Institution Decision, Amazon.com, Inc. v. Personalized Media
`Communications, LLC, IPR2014-01532 (Paper 8) (Mar. 31, 2015).
`Peuto, B.L., Architecture of a New Processor, IEEE Computer, Vol. 12,
`No. 2, Feb. 1979, pp. 10-21.
`1024 Radio Shack Catalogs, 1983-1986.
`1025 Morse, S.P., et al., Intel Microprocessors - 8008 to 8086, IEEE
`Computer, Vol. 13, No. 10, Oct. 1980, pp. 42-60.
`Ishiguro, T., et al., Composite Interframe Coding of NTSC Color
`Television Signals, Proc. Nat. Telecommun. Conf., Dallas, TX, Dec.
`1976, pp. 6.4.1-5.
`Earley, S., Closed Captioning with the Line 21 System, National
`Captioning Institute, pp. 180-184.
`1028 U.S. Patent No. 8,559,635 to Harvey, et al.
`1029 Dismissal Agreement and Covenant not to Sue [CONFIDENTIAL]
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`1022
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`1023
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`1026
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`1027
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing JOINT
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`MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317, was served on
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`March 9, 2017 to the following attorneys of record by electronic transmission:
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`Douglas Kline
`GOODWIN PROCTER LLP
`Exchange Place, 53 State Street
`Boston, Massachusetts 02109
`dkline@goodwinlaw.com
`DG-PMC-Apple@goodwinprocter.com
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`Jennifer Albert
`Stephen Schneiner
`Krupa K. Parikh
`April E. Weisbruch
`GOODWIN PROCTER LLP
`901 New York Avenue N.W.
`Washington, D.C. 20001
`jalbert@goodwinprocter.com
`sschreiner@goodwinprocter.com
`kparikh@goodwinlaw.com
`aweisbruch@goodwinlaw.com
`DG-PMC-Apple@goodwinprocter.com
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`/s/ Marcus E. Sernel
`Marcus E. Sernel
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`Thomas J. Scott
`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC
`14090 Southwest Freeway, Suite 450
`Sugar Land, TX 77478
`tscott@pmcip.com
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`
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`Date: March 9, 2017
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