UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`MICROSOFT CORPORATION, MICROSOFT MOBILE INC., SAMSUNG
`ELECTRONICS AMERICA, INC. AND SAMSUNG ELECTRONICS CO. LTD.
`Petitioners,
`
`v.
`
`
`
`
`
`FASTVDO LLC
`Patent Owner.
`_________________
`
`U.S. Patent No. 5,850,482
`Case IPR2016-01179
`
`_________________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS AS TO
`MICROSOFT MOBILE INC. AND MICROSOFT CORPORATION
`
`
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`MICROSOFT CORPORATION, MICROSOFT MOBILE INC., SAMSUNG
`ELECTRONICS AMERICA, INC. AND SAMSUNG ELECTRONICS CO. LTD.
`Petitioners,
`
`v.
`
`
`
`
`
`FASTVDO LLC
`Patent Owner.
`_________________
`
`U.S. Patent No. 5,850,482
`Case IPR2016-01179
`
`_________________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS AS TO
`MICROSOFT MOBILE INC. AND MICROSOFT CORPORATION
`
`
`
`Ex. 1003
`
`LIST OF EXHIBITS
`Ex. 1001 U.S. Pat. No. 5,850,482, “Error Resilient Method And Apparatus For
`Entropy Coding,” issued December 15, 1998 (“482 patent”)
`Ex. 1002 U.S. Pat. No. 5,392,037, “Method and Apparatus for Encoding and
`Decoding,” issued February 21, 1995 (“Kato”)
`File History for U.S. Pat. No. 5,850,482, Application No. 633,896
`(“482 file history”)
`Ex. 1004 U.S. Pat. No. 5,243,629, “Multi-Subcarrier Modulation For HDTV
`Transmission,” issued Sep. 7, 1993 (“Wei”)
`Ex. 1005 Declaration of Dr. Robert L. Stevenson (“Stevenson Dec.” or
`“Stevenson Declaration”)
`Ex. 1006 M. V. Wickerhauser, “High-Resolution Still Picture Compression,”
`Apr. 19, 1992
`Ex. 1007 R. C. Wood, “On Optimum Quantization,” IEEE Transactions on
`Information Theory, Vol. 15 (1969)
`E. R. Fiala and D. H. Greene, “Data Compression with Finite
`Windows,” Communications of the ACM, Vol. 32, No. 4 (1989)
`Plaintiff’s Preliminary Claim Constructions And Preliminary
`Identification Of Extrinsic Evidence, dated May 27, 2016
`Ex. 1010 Defendants’ Preliminary Claim Constructions And Identification Of
`Extrinsic Evidence, dated May 27, 2016
`Plaintiff’s First Amended Preliminary Claim Constructions And
`Preliminary Identification Of Extrinsic Evidence, dated June 1, 2016
`Ex. 1012
`Plaintiff’s Responsive Claim Constructions, dated June 10, 2016
`Ex. 1013 Defendants’ Responsive Claim Constructions And Identification Of
`Extrinsic Evidence, June 10, 2016
`FastVDO LLC v AT&T et al., 3:16-cv-00385-H-WVG, Dkt. No. 192
`Claim Construction Order, issued October 17, 2016.
`
`Ex. 1011
`
`Ex. 1014
`
`IPR2016-01179
`U.S. Patent No. 5,850,482
`
`i
`
`Ex. 1008
`
`Ex. 1009
`
`
`
`IPR2016-01179
`U.S. Patent No. 5,850,482
`Settlement And Release Agreement (filed under “Board Only” access
`designation)
`
`Ex. 1015
`
`
`
`ii
`
`
`
`IPR2016-01179
`U.S. Patent No. 5,850,482
`37 C.F.R. § 42.10 – STATEMENT OF RELIEF REQUESTED
`Microsoft Mobile Inc. and Microsoft Corporation (collectively “Moving
`
`I.
`
`Petitioner Parties”), and Patent Owner FastVDO LLC (“FastVDO”) jointly request
`
`that this proceeding be terminated with respect to the Moving Petitioner Parties.
`
`Petitioners Samsung Electronics America, Inc. and Samsung Electronics Co. Ltd.,
`
`do not oppose termination of the Moving Petitioner Parties from this proceeding.
`
`II.
`
`STATEMENT OF FACTS
`SUPPORTING TERMINATION
`On January 19, 2017, the undersigned counsel contacted the Board by email
`
`seeking permission to file this motion. On January 31, 2017, the Board responded
`
`by email with authorization.
`
`Microsoft Mobile Inc. and Microsoft Corporation have reached a settlement
`
`of their disputes with Patent Owner concerning the subject patent. Accordingly, the
`
`parties jointly request termination of these proceedings with respect to the Moving
`
`Petitioner Parties. Because there are remaining petitioner parties, this proceeding
`
`will continue without the Moving Petitioner Parties. As a result, terminating the
`
`proceeding as to the moving Petitioner Parties will not change the Board’s ability to
`
`review the subject patent or affect the current trial schedule. At the same time,
`
`having fewer parties will simplify the proceeding and make it somewhat more
`
`efficient.
`
`
`
`1
`
`
`
`IPR2016-01179
`U.S. Patent No. 5,850,482
`Termination of this proceeding as to the Moving Petitioner Parties is proper
`
`at this stage because (a) the Board has not decided the merits of this proceeding, and
`
`(b) the Moving Petitioner Parties and FastVDO are making this joint request under
`
`35 U.S.C. § 317(a). In addition, the Office Patent Trial Practice Guide indicates that:
`
`There are strong public policy reasons to favor settlement
`between the parties to a proceeding. The Board will be available to
`facilitate settlement discussions, and where appropriate, may require a
`settlement discussion as part of the proceeding. The Board expects that
`a proceeding will terminate after the filing of a settlement agreement,
`unless the Board has already decided the merits of the proceeding. 35
`U.S.C. 317(a), as amended, and 35 U.S.C. 327. Office Patent Trial
`Practice Guide (Section II (N)).
`
`For at least these reasons, termination of the Inter Partes Review is
`
`appropriate as to the Moving Petitioner Parties only, under 35 U.S.C. § 317(a) and
`
`37 C.F.R. § 42.74(a).
`
`Pursuant to 37 C.F.R. § 42.74, a copy of the settlement agreement (Ex. 1015)
`
`between FastVDO LLC and Microsoft Mobile Inc. and Microsoft Corporation, and
`
`a request that the settlement agreement be treated as business confidential
`
`2
`
`
`
`IPR2016-01179
`U.S. Patent No. 5,850,482
`information, are filed concurrently with this motion.1 The parties further request,
`
`pursuant to 37 C.F.R. § 42.74(c), that the agreement (Ex. 1015) be treated as
`
`confidential business information and kept separate from the files of the involved
`
`patent. The parties are filing, concurrently herewith, a Joint Request To Treat
`
`Settlement Agreement As Business Confidential Information And To Keep
`
`Separate.
`
`In addition, the status of the related district court litigations and IPRs for the
`
`patents at issue in the litigations are summarized below.
`
`A.
`
`Status Of The District Court Actions
`
`FastVDO LLC asserted U.S. Pat. No. 5,850,482 (the “’482 patent”) in suits
`
`filed June 2 and 3, 2015 in the U.S. District Court for the Eastern District of Texas,
`
`in case nos. 2:15-cv-00925 (the “925 case,” originally naming as defendants Nokia
`
`Inc. and Nokia Corp.) and 2:15-cv-00946 (the “946 case,” naming, inter alia, the
`
`Petitioner Samsung entities), respectively. Microsoft Mobile Inc. was later
`
`substituted into the 925 case. On January 29, 2016, the 925 case and the 946 case,
`
`along with cases against a number of other defendants were consolidated for pretrial
`
`issues, and assigned lead case no. 2:15-cv-00921. Subsequently, on February 11,
`
`
`1 The settlement agreement has been filed electronically via E2E for “Board
`
`Only” to preserve confidentiality from the other parties.
`
`3
`
`
`
`IPR2016-01179
`U.S. Patent No. 5,850,482
`2016, the cases were transferred to the Southern District of California. Upon
`
`transfer, the case against Microsoft Mobile Inc. was assigned case no. 3:16-cv-00390
`
`and the case against Samsung was assigned case no. 3:16-cv-00395. (Collectively,
`
`“the concurrent litigation”). The concurrent litigation was again consolidated with
`
`the cases against the other defendants, including (defendants in parenthesis):
`
` 3:16-cv-00385 (AT&T Mobility LLC, et al.) (case against AT&T
`defendants terminated) (LEAD CASE),
`
` 3:16-cv-00386 (LG Electronics, Inc., et al.),
`
` 3:16-cv-00389 (NEC Corporation, et al.) (terminated),
`
` 3:16-cv-00394 (ZTE Corporation, et al.), and
`
` 3:16-cv-00396 (Huawei Technologies Co., et al.).
`
`On January 6, the Court granted the parties’ joint motion to dismiss with
`
`prejudice the case against Microsoft Mobile. The other cases not noted as terminated
`
`above – including the case against the Petitioner Samsung entities – remain pending
`
`in the Southern District of California, and on January 24, 2017, the Court stayed the
`
`remaining concurrent litigation proceedings pending the outcome of this and the
`
`other IPR proceedings on the ’482 patent, listed below.
`
`4
`
`
`
`IPR2016-01179
`U.S. Patent No. 5,850,482
`
`B.
`
`Status Of Related IPR Proceedings
`
`The ’482 patent has been subject to one or more Petitions for Inter Partes
`
`Review. The Petitions and current status of each petition is listed below:
`
`IPR No.
`
`Filing Date
`
`Parties
`
`Status
`
`2016-01203
`
`6/16/2016
`
`Apple Inc.
`
`2016-01179
`(present IPR)
`
`6/16/2016
`
`Microsoft Corporation,
`Microsoft Mobile Inc.,
`Samsung Electronics
`America, Inc. and Samsung
`Electronics Co. Ltd.
`
`Trial Instituted
`
`Trial Instituted
`
`III. CONCLUSION
`For the reasons set forth above, the parties jointly request that the Board grant
`
`this Motion to Terminate Proceedings as to Moving Petitioner Parties Microsoft
`
`Mobile Inc. and Microsoft Corporation.
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`Dated: February 1, 2017
`
`
`
`
`By /Derrick W. Toddy/
`Derrick W. Toddy, Reg. No. 74,591
`derrick.toddy@klarquist.com
`Klarquist Sparkman, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`Lead Counsel for Moving Petitioner Parties
`
`5
`
`
`
`February 1, 2017
`
`IPR2016-01179
`U.S. Patent No. 5,850,482
`
`
`
`By /Wayne M. Helge/
`Wayne M. Helge, Reg. No. 56,905
`whelge@dbjg.com
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Ste 500
`McLean, VA 22102
`Telephone: (571)765-7700
`Facsimile: (571)765-7200
`
`Lead Counsel for Patent Owner
`
`6
`
`
`
`IPR2016-01179
`U.S. Patent No. 5,850,482
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that a complete copy of JOINT MOTION TO
`
`TERMINATE PROCEEDINGS AS TO MICROSOFT MOBILE INC. AND
`
`MICROSOFT CORPORATION only (without exhibits) was served on the
`
`correspondence email addresses of record for lead and backup counsel for Patent
`
`Owner:
`
`Wayne M. Helge
`whelge@dbjg.com
`Walter D. Davis
`wdavis@dbjg.com
`Davidson, Berquist, Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`
`
`via email, on February 1, 2017.
`
`A courtesy copy of this JOINT MOTION only was also served upon
`
`litigation counsel for Patent Owner via email:
`
`Marc A. Fenster
`mfenster@raklaw.com
`Jeffrey Z.Y. Liao
`jliao@raklaw.com
`Reza Mirzaie
`rmirzaie@raklaw.com
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`
`
`
`By /Derrick W. Toddy/
`Derrick W. Toddy, Reg. No. 74,591
`Lead Counsel for Petitioners
`
`1
`
`
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