UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PROOFPOINT, INC. AND
`ARMORIZE TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`FINJAN, INC.
`Patent Owner
`
`Case: IPR2016-00970
`U.S. Patent No. 8,225,408
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PROOFPOINT, INC. AND
`ARMORIZE TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`FINJAN, INC.
`Patent Owner
`
`Case: IPR2016-00970
`U.S. Patent No. 8,225,408
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`Case No. IPR2016-00970
`Joint Motion To Terminate
`Pursuant to 35 U.S.C. § 317(a), Petitioner and Patent Owner jointly request
`
`termination of this inter partes review (IPR) proceeding, IPR2016-00970, which is
`
`directed to U.S. Patent No. 8,225,408. The parties are also concurrently filing
`
`separate motions to terminate three other IPR proceedings involving Petitioner and
`
`Patent Owner, namely: IPR2016-00937, which is directed to U.S. Patent No.
`
`8,141,154, IPR2016-00966, which is directed to U.S. Patent No. 7,647,633, as well
`
`as IPR2016-00967, which is also directed to U.S. Patent No. 8,225,408.1
`
`Termination of this proceeding is appropriate as the parties have settled their
`
`dispute and entered into a written Settlement Agreement on June 3, 2016, a true
`
`copy of which has been submitted as Exhibit 1065. Pursuant to the Settlement
`
`Agreement, the parties have agreed to terminate all of the above-identified IPRs, as
`
`well as dismiss the related district court litigation. There are no other pending
`
`proceedings between the parties.
`
`On June 9, 2016, Petitioner advised the Board that the parties had reached a
`
`settlement, and sought authorization to file joint motions to terminate these
`
`proceedings. The Board authorized the filing of such motions on June 14, 2016.
`
`1 The petitions for all of the identified proceedings were accompanied by joinder
`
`motions. The parties respectfully request that the Board also dismiss these joinder
`
`motions as moot.
`
`1
`
`
`
`Case No. IPR2016-00970
`Joint Motion To Terminate
`In accordance with the Board’s June 14th email, the parties are also filing separate
`
`requests for the Settlement Agreement
`
`to be treated as confidential business
`
`information and kept separate from the files of the challenged patents pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The Settlement Agreement has been
`
`filed in PRPS under the designation of “Parties and Board Only.”
`
`The applicable statute, 35 U.S.C. § 317(a), provides that an IPR proceeding
`
`“shall be terminated with respect to any petitioner upon the joint request of the
`
`petitioner and the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” In this case, the Board has
`
`not yet determined whether trial will be instituted. Thus, the Board has not yet
`
`reached any decision on the merits of the proceeding.2 Accordingly, termination at
`
`this early juncture promotes efficiency, conserves Board resources, and minimizes
`
`unnecessary costs.
`
`In view of the foregoing, the parties jointly and respectfully request that the
`
`instant IPR proceeding be terminated.
`
`2 The Board recently instituted trial in each of the underlying IPR proceedings filed
`
`by different petitioners to which these proceedings sought to be joined, namely
`
`IPR2016-00157 (to which joinder was sought in the instant proceeding), as well as
`
`IPR2015-01974, IPR2015-01979 and IPR2015-02001. Thus, the Board has also
`
`not yet decided the merits of any of these underlying IPR proceedings.
`
`2
`
`
`
`Case No. IPR2016-00970
`Joint Motion To Terminate
`
`Date: June 16, 2016
`
`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
`
`
`
`Case No. IPR2016-00970
`Joint Motion To Terminate
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R.
`
`§ 42.74 was served electronically via e-mail on June 16, 2016, in its entirety on the
`
`following:
`
`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 IPR2016-00157:
`
`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
`
`Mathew I. Kreeger
`Matthew Chivvis
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`MChivvis@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`Case No. IPR2016-00970
`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
`
`Jonathan Bockman
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard
`McLean, VA 22101
`JBockma@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`Date: June 16, 2016
`
`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
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