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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`APPLE INC.,
`Petitioner,
`
`v.
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`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`____________________
`
`IPR2016-01561
`U.S. Patent No. 6,233,181
`____________________
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
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`NY01:4386581.1
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`Pursuant to 35 U.S.C. § 317(a), the Petitioner and Patent Owner jointly
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`request termination of this inter partes review, which is directed to U.S. Patent No.
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`6,233,181.
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`
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`Termination of this review is appropriate because the parties have resolved
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`their dispute regarding U.S. Patent No. 6,233,181 and have reached an agreement
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`to, among other things, terminate this review. Ex. 1021, Settlement Agreement
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`(submitted as business confidential information pursuant to 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c)). “Generally, the Board expects that a proceeding will
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`terminate after the filing of a settlement agreement.” Oracle Corp. v. Cmty. United
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`IP, LLC, CBM2013-00015, Paper 13 (July 25, 2013) (citing Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48765–66 (Aug. 14, 2012)).
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`The petition for review was filed on August 12, 2016. Patent Owner filed a
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`preliminary response on November 23, 2016. The inter partes review was
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`instituted on February 7, 2017. Patent Owner filed a response on May 9, 2017.
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`Petitioner filed a reply to Patent Owner’s response on August 8, 2017. Termination
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`at this juncture promotes efficiency, conserves Board resources and minimizes
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`unnecessary costs.
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`On September 28, 2017, the parties advised the Board that they have reached
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`a settlement, and sought authorization to file a joint motion to terminate the
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`proceeding. The Board authorized the filing of a joint motion to terminate this
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`NY01:4386581.1
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`2
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`proceeding on October 10, 2017. Per the Board’s authorization, a true copy of the
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`parties’ confidential written settlement agreement is being filed as an exhibit
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`contemporaneously with this joint motion to terminate. The settlement agreement
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`is being filed for access by the “Parties and Board Only.” The parties desire that
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`the settlement agreement be maintained as business confidential information under
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and a separate joint request for such
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`is being filed contemporaneously.
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`
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`Dated: October 18, 2017
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`Respectfully submitted,
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`/s/ John R. Hutchins
`John R. Hutchins (Reg. No. 43,686)
`Lead Counsel for Petitioner
`Andrews Kurth Kenyon LLP
`1500 K Street NW
`Washington, DC 20005
`T: 202.220.4200
`F: 202.220.4201
`jhutchins@andrewskurthkenyon.com
`
`Rose Cordero Prey (pro hac vice)
`rcordero@ andrewskurthkenyon.com)
`Michael Zachary (pro hac vice)
`mzachary@ andrewskurthkenyon.com
`
`
`Nicholas T. Peters (Reg. No. 53,456)
`Lead Counsel for Patent Owner
`Fitch Even Tabin & Flannery LLP
`120 South LaSalle Street, Suite 1600
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`NY01:4386581.1
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`3
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`Chicago, Illinois 60603
`T: (312) 577-7000
`F: (312) 577-7007
`ntpete@fitcheven.com
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`NY01:4386581.1
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that a true
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`and correct copy of JOINT MOTION TO TERMINATE INTER PARTES
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`REVIEW has been served on the Patent Owner’s attorneys of record via email, on
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`October 18, 2017 at the following addresses:
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`Nicholas T. Peters (Reg. No. 53,456)
`Email: ntpete@fitcheven.com
`Paul B. Henkelmann (Reg. No. 65,891)
`Email: phenkelmann@fitcheven.com
`David A. Gosse (Reg. No. 61,511)
`Email: dgosse@fitcheven.com
`FITCH EVEN TABIN & FLANNERY, LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603-3406
`Telephone: (312) 577-7000
`Facsimile: (312) 577-7007
`Email: LimestoneIPR@fitcheven.com
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`
`/s/ John R. Hutchins
`John R. Hutchins (Reg. No. 43,686)
`Lead Counsel for Petitioner
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`NY01:4386581.1
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`5
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