U.S. Patent No. 8,894,066
`Joint Motion for Termination
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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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`RUBICON COMMUNICATIONS, LP
`Petitioner,
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`v.
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`LEGO A/S
`Patent Owner.
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`Case IPR2016-01187
`Patent 8,894,066
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`JOINT MOTION FOR TERMINATION
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`Joint Motion for Termination
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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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`RUBICON COMMUNICATIONS, LP
`Petitioner,
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`v.
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`LEGO A/S
`Patent Owner.
`____________
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`Case IPR2016-01187
`Patent 8,894,066
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`JOINT MOTION FOR TERMINATION
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`U.S. Patent No. 8,894,066
`Joint Motion for Termination
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, Patent Owner, LEGO
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`A/S, and Petitioner, Rubicon Communications, LP, (collectively, the “Parties”)
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`jointly request termination of the Inter Partes Review proceeding, No. IPR2016-
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`01187.
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`At a court-scheduled settlement conference on December 11, 2017, the
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`Parties agreed to settle all of their disputes, to dismiss with prejudice the related
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`action, LEGO System A/S v. Rubicon Communications LP, No. 3:15-cv-00823-
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`VLB (D. Conn. filed May 29, 2015), and other litigation, Pono Paani, LLC v.
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`Belkin International, Inc., No. 1:17-cv-00054-SS (W.D. Tex. filed Jan. 24, 2017),
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`and to terminate the instant Inter Partes Review proceeding. The Parties have
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`executed Confidential Settlement Agreement, Release, and Covenant Not to Sue
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`(the “Settlement Agreement”) in writing, and a true copy is submitted under seal in
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`accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
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`The Parties jointly request that the Settlement Agreement be treated as
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`business confidential information and be kept separate from the files of the above
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`captioned Inter Partes Review proceeding under 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c).
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`I.
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`INTRODUCTION
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`U.S. Patent No. 8,894,066
`Joint Motion for Termination
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`On June 10, 2016, Petitioner filed a request for Inter Partes Review of U.S.
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`Patent No. 8,894,066 (the “ʼ066 Patent”). Paper 1. On December 16, 2016, the
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`Board instituted this proceeding. Paper 38. Patent Owner filed a Response on
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`June 23, 2017, Paper 70, and Petitioner filed a Reply on August 30, 2017, Paper
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`72. The Parties appeared before the Board at a trial hearing on October 11, 2017.
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`On December 11, 2017, the Parties agreed to settle all of their disputes
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`involving U.S. Patent No. 8,894,066, including all litigations and the Patent Office
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`proceeding related thereto.
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`On December 12, 2017, the Parties informed the Board of the settlement and
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`requested authorization to file a joint motion for termination of the proceeding with
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`respect to both Patent Owner and Petitioner. The Board authorized the filing of the
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`motion for termination by 12 P.M. Eastern Time, December 13, 2017. The Board
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`additionally authorized the Parties to include with the joint motion for termination
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`a request to treat the Settlement Agreement as business confidential information.
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`II. TERMINATION AS TO PATENT OWNER AND PETITIONER
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`IS APPROPRIATE
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`Termination of this Inter Partes Review proceeding as to Patent Owner and
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`Petitioner is appropriate, because it is an important part of a global settlement of
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`U.S. Patent No. 8,894,066
`Joint Motion for Termination
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`multiple adjudications that the Parties were able to reach after many months of
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`effort. As a result of the settlement, no dispute remains between Patent Owner and
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`Petitioner involving the ’066 Patent. The Parties have expressly agreed to dismiss
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`with prejudice the related action, concerning the ’066 and other patents, and other
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`litigation between Patent Owner’s licensee—Belkin International, Inc.—and
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`Petitioner’s sister company—Pono Paani, LLC—and to jointly request termination
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`of this Inter Partes Review proceeding. With many events and issues arising from
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`two Federal Court litigations and an Inter Partes Review proceeding, it was only
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`with the assistance of a court-scheduled settlement conference on December 11,
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`2017 where the Parties were able to settle after an extended session with the United
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`States Magistrate Judge, Robert A. Richardson, ending at 9 P.M. Eastern Time.
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`The Parties would not have been able to reach an agreement without the court’s
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`assistance, and the settlement conference could not have been scheduled earlier
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`than December 11, 2017.
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`Termination of this Inter Partes Review proceeding is also appropriate, as
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`the Board has not “decided the merits of the proceeding” and a final written
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`decision has not yet been entered. See Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48768 (Aug. 14, 2012). Grant of this joint motion for termination
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`would encourage patent owners and petitioners to settle, even if they are not
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`initially able to reach an agreement ahead of the final decision due to the number
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`U.S. Patent No. 8,894,066
`Joint Motion for Termination
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`of issues and/or severity of dispute. “There are strong public policy reasons to
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`favor settlement between the parties to a proceeding.” Id. On the other hand,
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`denial of this motion would discourage parties from attempting to settle their
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`dispute as they near the final decision, making settlements of Federal Court
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`litigations, like the two between the Parties here, also less likely. “The law favors
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`settlement of cases.” Bergh v. Department of Transp., FAA, 794 F.2d 1575, 1577
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`(Fed. Cir. 1986).
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`For the above reasons, the Parties respectfully request the Board grant this
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`joint motion for termination.
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`III. STATUS OF RELATED ACTION
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`The related District Court action between Patent Owner and Petitioner has
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`been settled and dismissed.
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`IV. SETTLEMENT AGREEMENT AS BUSINESS
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`CONFIDENTIAL INFORMATION
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`Patent Owner and Petitioner hereby request that the Settlement Agreement,
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`filed herewith as Exhibit 2108, be treated as business confidential information, be
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`kept separate from the file of the above captioned Inter Partes Review proceeding,
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`and be made available only to Federal Government agencies on written request, or
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`to any person on a showing of good cause pursuant to 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c). In view of that request, the Settlement Agreement has been
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`U.S. Patent No. 8,894,066
`Joint Motion for Termination
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`filed for access by the “Parties and Board Only.”
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner and Petitioner jointly request that
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`the Board terminate this Inter Partes Review proceeding, and treat the Settlement
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`Agreement filed herewith as business confidential information, and keep it separate
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`from the file of the above captioned Inter Partes Review proceeding.
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`Respectfully submitted,
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`Dated: December 12, 2017
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`/ Anthony M. Petro /
`Anthony M. Petro
`Registration No. 59,391
`tpetro@intprop.com
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`MEYERTONS, HOOD,
`KIVLIN, KOWERT &
`GOETZEL
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`(512) 853-8883
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`/ Andrew M. Riddles /
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`Andrew M. Riddles
`Registration No. 31,657
`ariddles@daypitney.com
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`Elizabeth A. Alquist
`Admitted Pro Hac Vice
`eaalquist@daypitney.com
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`Day Pitney LLP
`7 Times Square
`New York, NY 10036
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`Counsel for Petitioner
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`U.S. Patent No. 8,894,066
`Joint Motion for Termination
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`Tel: (212) 297-5855
`Fax: (203) 202-3896
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`Counsel for Patent Owner
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`U.S. Patent No. 8,894,066
`Joint Motion for Termination
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on December
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`12, 2017, a true and correct copy of the foregoing, via electronic service, was
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`served on all counsel of record:
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`/ Andrew M. Riddles /
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`Andrew M. Riddles
`Registration No. 31,657
`ariddles@daypitney.com
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`Elizabeth A. Alquist
`Admitted Pro Hac Vice
`eaalquist@daypitney.com
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`Day Pitney LLP
`7 Times Square
`New York, NY 10036
`Tel: (212) 297-5855
`Fax: (203) 202-3896
`Counsel for Patent Owner
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`U.S. Patent No. 8,894,066
`Joint Motion for Termination
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`CERTIFICATE OF WORD COUNT
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`The above Joint Motion for Termination contains 896 words and 7 pages,
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`which is below the 15 page limit specified in 37 C.F.R. § 42.24(a)(1). The count
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`was obtained relying on the word count feature of Microsoft Word 2010.
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`/ Andrew M. Riddles /
`Andrew M. Riddles
`Registration No. 31,657
`ariddles@daypitney.com
`Day Pitney LLP
`7 Times Square
`New York, NY 10036
`Tel: (212) 297-5855
`Fax: (203) 202-3896
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