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UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`SPRINT SPECTRUM L.P., CELLCO PARTNERSHIP D/B/A
`VERIZON WIRELESS, and AT&T MOBILITY LLC,
`
`Petitioners
`
`v.
`
`ADAPTIX, INC.
`
`Patent Owner
`
`________________
`
`U.S. Patent No. 8,934,375 B2
`Case IPR2016-00824
`
`
`SPRINT SPECTRUM L.P., CELLCO PARTNERSHIP D/B/A VERIZON
`WIRELESS, AT&T MOBILITY LLC AND ADAPTIX, INC.’S
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`1
`
`

`
`Pursuant to 35 U.S.C. § 317(a), Petitioners Sprint Spectrum L.P., Cellco
`
`Partnership d/b/a Verizon Wireless, and AT&T Mobility LLC (collectively,
`
`“Petitioners”) and Patent Owner Adaptix, Inc. (“Adaptix”) (collectively, the
`
`“Parties”) jointly request termination of the Inter Partes Review of U.S. Patent No.
`
`8,934,375 (“the ’375 Patent”). The filing of this request was authorized by Andrew
`
`Kellogg, Supervisory Paralegal, Patent Trial and Appeal Board, via e-mail dated
`
`September 26, 2016.
`
`Petitioners filed their Petition for Inter Partes Review on March 30, 2016.
`
`Adaptix filed a preliminary response on July 11, 2016. See Paper No. 8. On
`
`September 20, 2016, the Board instituted trial as to only claims 2, 4, 6, 8, 18, 20,
`
`22, and 24 of the ’375 patent. See Paper No. 9. The Board did not institute trial as
`
`to claims 5, 7, 11, 13, 14, 21, 23, 27, 29, and 30. Id.
`
`The Parties have settled their dispute with respect to the ’375 patent and
`
`have reached agreement to terminate this Inter Partes Review.
`
`AT&T Mobility LLC
`
`The Settlement Agreement between AT&T Mobility LLC and Adaptix has
`
`been made in writing, and a true and correct copy shall be filed with this Office as
`
`business confidential information pursuant to 35 U.S.C. § 317(b). See Exhibit
`
`2003.
`
`
`
`2
`
`

`
`There are no collateral agreements or understandings made in connection
`
`with, or in contemplation of, the termination of this proceeding. As stated in
`
`35 U.S.C. § 317(a), because AT&T Mobility LLC and Adaptix request this
`
`termination as to Petitioner AT&T Mobility LLC, no estoppel under 35 U.S.C. §
`
`315(e) shall attach to AT&T Mobility LLC.
`
`Cellco Partnership d/b/a Verizon Wireless
`
`The Release Agreement between Cellco Partnership d/b/a Verizon Wireless
`
`and Adaptix has been made in writing, and a true and correct copy shall be filed
`
`with this Office as business confidential information pursuant to 35 U.S.C. §
`
`317(b). See, Exhibit 2004.
`
`There are no collateral agreements or understandings made in connection
`
`with, or in contemplation of, the termination of this proceeding. As stated in
`
`35 U.S.C. § 317(a), because Cellco Partnership d/b/a Verizon Wireless and
`
`Adaptix request this termination as to Petitioner Cellco Partnership d/b/a Verizon
`
`Wireless, no estoppel under 35 U.S.C. § 315(e) shall attach to Cellco Partnership
`
`d/b/a Verizon Wireless.
`
`Sprint Spectrum L.P.
`
`This Joint Motion, together with the Joint Motion to Terminate IPR 2016-
`
`00823, constitutes Sprint Spectrum L.P.’s and Adaptix’s written agreement to
`
`terminate this proceeding, which is hereby filed with this Office.
`
`
`
`3
`
`

`
`There are no collateral agreements or understandings made in connection
`
`with, or in contemplation of, the termination of this proceeding. As stated in 35
`
`U.S.C. § 317(a), because Sprint Spectrum L.P. and Adaptix request this
`
`termination as to Petitioner Sprint Spectrum L.P., no estoppel under 35 U.S.C. §
`
`315(e) shall attach to Sprint Spectrum L.P.
`
`The ’375 Patent is the subject of one other instituted IPR—IPR2016-00823,
`
`which the parties are seeking to contemporaneously terminate by joint motion.
`
`There are no current or contemplated pending litigation proceedings involving the
`
`’375 Patent.
`
`Therefore, Petitioners and Adaptix respectfully request termination of the
`
`Inter Partes Review of U.S. Patent No. 8,934,375, Case No. IPR2016-00824.
`
`Date: November 2, 2016
`
`
`
`Date: November 2, 2016
`
`
`
`
`
`Respectfully submitted,
`
`/Robert C. Hilton/
`Robert C. Hilton
`Registration No.: 47,649
`Firm: McGuireWoods LLP
`Telephone No.: (214) 932-6400
`Fax. No.: (214) 932-6499
`
`Attorney for Petitioner Sprint Spectrum
`L.P.
`
`/David L. Cavanaugh/
`David L. Cavanaugh
`Registration No.: 36,476
`
`
`
`4
`
`

`
`Date: November 2, 2016
`
`
`
`Date: November 2, 2016
`
`
`
`Firm: Wilmer Cutler Pickering Hale and
`Dorr LLP
`Telephone No.: (202) 663-6000
`Fax. No. : (202) 663-6363
`
`Attorney for Petitioner Cellco
`Partnership d/b/a Verizon Wireless
`
`/Douglas M. Kubehl/
`Douglas M. Kubehl
`Registration No.: 41,915
`Firm: Baker Botts L.L.P.
`Telephone No.: (214) 953-6486
`Fax. No.: (214) 661-4486
`
`Attorney for Petitioner AT&T Mobility
`LLC
`
`/Amedeo F. Ferraro/
`Amedeo F. Ferraro
`Registration No. 37,129
`MARTIN & FERRARO, LLP
`17383 Sunset Boulevard, Suite 250
`Los Angeles, California 90272
`Telephone: (310) 286-9800
`Facsimile: (310) 286-2795
`
`Attorney for Patent Owner
`
`5
`
`
`
`
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the foregoing Joint Motion
`
`to Terminate Proceeding for Inter Partes Review of U.S. Patent No. 8,934,375 was
`
`served on November 2, 2016 via electronic mail to the attorneys of record for the
`
`Petitioner:
`
`Lead Counsel
`David L. Cavanaugh (Reg. No. 36,476)
`Wilmer Hale LLP
`60 State St.
`Boston, MA, 01945
`Phone: (202) 663-6025
`Fax: (202) 663-6363
`david.cavanaugh@wilmerhale.com
`
`Back-up Counsel
`Larissa B. Park (Reg. No. 59,051)
`Wilmer Hale LLP
`60 State St.
`Boston, MA, 01945
`Phone: (202) 663-6025
`Fax: (202) 663-6363
`larissa.park@wilmerhale.com
`
`Back-up Counsel
`Robert Hilton (Reg. No. 47,649)
`George Davis (Reg. No. 68,205)
`McGuire Woods LLP
`2000 McKinney Avenue, Suite 1400,
`Dallas, TX, 75201
`RHilton@mcguirewoods.com
`GDavis@mcguirewoods.com
`
`Back-up Counsel
`Douglas Kubehl (Reg. No. 41,915)
`Kurt Pankratz (Reg. No. 46,977)
`Jennifer Tempesta (Reg. No. 59,021)
`Baker Botts LLP
`30 Rockefeller Plaza
`New York, NY 10112
`doug.kubehl@bakerbotts.com
`kurt.pankratz@bakerbotts.com
`jennifer.tempesta@bakerbotts.com
`
`
`Date: November 2, 2016
`
`
`
`
`
`
`
`/Amedeo F. Ferraro/
`Amedeo F. Ferraro
`Registration No. 37,129
`MARTIN & FERRARO, LLP
`17383 Sunset Boulevard, Suite 250
`Los Angeles, California 90272
`Telephone: (310) 286-9800
`Facsimile: (310) 286-2795
`
`6

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