`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PROOFPOINT, INC. AND
`ARMORIZE TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`FINJAN, INC.
`Patent Owner
`
`Case: IPR2016-00937
`U.S. Patent No. 8,141,154
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`Case No. IPR2016-00937
`Joint Motion To Terminate
`Pursuant to 35 U.S.C. § 317(a), Petitioner and Patent Owner jointly request
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`termination of this inter partes review (IPR) proceeding, IPR2016-00937, which is
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`directed to U.S. Patent No. 8,141,154. The parties are also concurrently filing
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`separate motions to terminate three other IPR proceedings involving Petitioner and
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`Patent Owner, namely: IPR2016-00966, which is directed to U.S. Patent No.
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`7,647,633, as well as IPR2016-00967 and -00970, which are both directed to U.S.
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`Patent No. 8,225,408.1
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`Termination of this proceeding is appropriate as the parties have settled their
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`dispute and entered into a written Settlement Agreement on June 3, 2016, a true
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`copy of which has been submitted as Exhibit 1041. Pursuant to the Settlement
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`Agreement, the parties have agreed to terminate all of the above-identified IPRs, as
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`well as dismiss the related district court litigation. There are no other pending
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`proceedings between the parties.
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`On June 9, 2016, Petitioner advised the Board that the parties had reached a
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`settlement, and sought authorization to file joint motions to terminate these
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`proceedings. The Board authorized the filing of such motions on June 14, 2016.
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`1 The petitions for all of the identified proceedings were accompanied by joinder
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`motions. The parties respectfully request that the Board also dismiss these joinder
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`motions as moot.
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`1
`
`
`
`Case No. IPR2016-00937
`Joint Motion To Terminate
`In accordance with the Board’s June 14th email, the parties are also filing separate
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`requests for the Settlement Agreement
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`to be treated as confidential business
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`information and kept separate from the files of the challenged patents pursuant to
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The Settlement Agreement has been
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`filed in PRPS under the designation of “Parties and Board Only.”
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`The applicable statute, 35 U.S.C. § 317(a), provides that an IPR proceeding
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`“shall be terminated with respect to any petitioner upon the joint request of the
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`petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” In this case, the Board has
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`not yet determined whether trial will be instituted. Thus, the Board has not yet
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`reached any decision on the merits of the proceeding.2 Accordingly, termination at
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`this early juncture promotes efficiency, conserves Board resources, and minimizes
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`unnecessary costs.
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`In view of the foregoing, the parties jointly and respectfully request that the
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`instant IPR proceeding be terminated.
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`2 The Board recently instituted trial in each of the underlying IPR proceedings filed
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`by different petitioners to which these proceedings sought to be joined, namely
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`IPR2015-01979 (to which joinder was sought in the instant proceeding), as well as
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`IPR2015-01974, IPR2015-02001 and IPR2016-00157. Thus, the Board has also
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`not yet decided the merits of any of these underlying IPR proceedings.
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`2
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`
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`Case No. IPR2016-00937
`Joint Motion To Terminate
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`Date: June 16, 2016
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`Respectfully submitted,
`
`By: /Joseph J. Richetti/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorneys for Petitioner – Proofpoint, Inc.
`and Armorize Technologies, Inc.
`
`3
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`
`
`Case No. IPR2016-00937
`Joint Motion To Terminate
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing JOINT MOTION TO
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`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R.
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`§ 42.74 was served electronically via e-mail on June 16, 2016, in its entirety on the
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`following:
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`Counsel for Patent Owner
`
`James Hannah
`Michael Lee
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`jhannah@kramerlevin.com
`mhlee@kramerlevin.com
`svdocketing@kramerlevin.com
`
`Michael Kim
`Finjan Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 9430
`mkim@finjan.com
`
`Jeffrey H. Price
`Shannon Hedvat
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`jprice@kramerlevin.com
`shedvat@kramerlevin.com
`
`Counsel for Petitioners in IPR2015-01979:
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
`
`1
`
`
`
`Christopher Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`zpatdcdocketing@cooley.com
`
`Case No. IPR2016-00937
`Joint Motion To Terminate
`
`Orion Armon
`Christopher Max Colice
`Jennifer Volk-Fortier
`Brian Eutermoser
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`zPaloAltoNetworksIPR@cooley.com
`
`Date: June 16, 2016
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`Respectfully submitted,
`
`By: /Joseph J. Richetti/
`Joseph J. Richetti (Reg. No. 47,024)
`Lead Attorney for Petitioner
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Direct Tel: (212) 541-1092
`Email: joe.richetti@bryancave.com
`Attorneys for Petitioner – Proofpoint, Inc.
`and Armorize Technologies, Inc
`
`2