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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`Microsoft Corporation,
`Petitioner
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`v.
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
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`____________
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`Case IPR2016-01576
`Patent 5,754,946
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`____________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`Microsoft Corporation,
`Petitioner
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`v.
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
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`____________
`
`Case IPR2016-01576
`Patent 5,754,946
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`____________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`Case IPR2016-01576
`Patent No. 5,754,946
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`Joint Motion to Terminate Proceeding
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`Pursuant to 35 U.S.C. § 317(a), Microsoft Corporation (“Microsoft” or
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`“Petitioner”) and Mobile Telecommunications Technologies, LLC (“Patent
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`Owner”) (jointly, the “Parties”) jointly request termination of IPR2016-01576,
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`which is directed to U.S. Patent No. 5,754,946 (“the ’946 Patent”).
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`On August 11, 2016, Petitioner filed a Petition for Inter Partes Review
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`(“Petition”) before the United States Patent Trial and Appeal Board. Patent
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`Owner’s preliminary response was filed on November 21, 2016. The United States
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`Patent and Trademark Office (“USPTO”) has not yet issued a Decision to Institute
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`inter partes review of the ’946 Patent. The Parties have settled their dispute, and
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`have reached agreement to terminate this inter partes review.
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77
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`Fed.Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
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`instant Motion on January 3, 2017. IPR2013-00428, Paper No. 56 provides
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`guidance as to the content of a motion to terminate. There, the Board indicates
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`that a joint motion, such as this one, should (1) include a brief explanation as to
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`why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue, and the status of each; and (3) identify any related
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`proceedings currently before the Office. IPR2013-00428, Paper No. 56 at 2. This
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`Motion satisfies each of the above requirements.
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`1
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`Case IPR2016-01576
`Patent No. 5,754,946
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`Joint Motion to Terminate Proceeding
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`Indeed, the Parties have entered into a Settlement Agreement, and a true
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`copy of the same is attached hereto as Exhibit 2001, as required by 35 U.S.C. §
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`317(b) and 37 C.F.R. § 42.74(b).1 The Parties desire that the Settlement
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`Agreement (Exhibit 2001) be maintained as business confidential information
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`under 37 C.F.R. §42.74(c) and a separate joint request to that effect is being filed
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`on even date herewith.
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`1. Reasons Why Termination is Appropriate.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the 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.”
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`Because the parties are jointly requesting termination and the Office has not
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`yet “decided the merits of the proceeding before the request for termination is
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`filed,” termination of the inter partes review with respect to Petitioner is
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`warranted. Within the context of Section 317(a), a decision on the merits must be
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`something beyond a decision instituting trial. Otherwise the quoted phrase would
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`be rendered meaningless because every “inter partes review instituted under this
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`1 The Settlement Agreement is being filed electronically via the Patent Review
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`Processing System (PRPS) as “Parties and Board Only.”
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`2
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`Case IPR2016-01576
`Patent No. 5,754,946
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`chapter” originates with a decision instituting trial. Here, no decision on the
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`Joint Motion to Terminate Proceeding
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`merits has been made. Accordingly, the USPTO is required to terminate this inter
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`partes review with respect to Petitioner based on this joint request.
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`Moreover, Petitioner, Microsoft, does not oppose Patent Owner in seeking
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`termination of this inter partes review proceeding altogether.
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`Because § 317(a) indicates that the USPTO is not required to terminate an
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`inter partes review when no petitioner remains in the proceeding, Patent Owner
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`provides comments as to why termination with respect to Patent Owner is proper
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`in Patent Owner’s Explanation as to Why Termination Is Appropriate, attached
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`hereto as Exhibit 2002.
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`3
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`Case IPR2016-01576
`Patent No. 5,754,946
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`Joint Motion to Terminate Proceeding
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`2. All parties in any pending related litigation involving the patents at
`issue, and current status of each such related litigation.
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`
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`Petitioner is involved in another pending related litigation involving the ’946
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`Patent.2 However, that litigation is also resolved by the parties settlement
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`agreement. Other parties involved in litigations related to the ’946 Patent are
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`identified in the table that follows.
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`Case Name
`Mobile
`Telecommunications
`Technologies LLC v.
`Google Inc.
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`Case No.
`2.16-cv-
`00002-
`JRG-RSP
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`Court
`EDTX
`Marshall
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`
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`Defendants
`Google Inc.
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`Status
`Pending
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`3. Related proceedings currently before the Office and Status.
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`Aside from this inter partes review proceeding, the ’946 Patent is also the
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`subject of the following proceeding(s) currently before the Office:
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`Related Proceeding Requestor/Petitioner Status
`IPR2016-01581
`Microsoft Inc.
`Pending
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`
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`Pursuant to the Settlement Agreement, Petitioner will not further participate
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`in these proceedings even if the Petition is not terminated pursuant to this joint
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`motion, except to the extent necessary to comply with any order from the PTAB or
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`4
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`Case IPR2016-01576
`Patent No. 5,754,946
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`any other rule that prohibits Petitioner from withdrawing from these proceedings.
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`Joint Motion to Terminate Proceeding
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`Patent Owner reserves its right to participate (including the right to seek exclusion
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`of some or all the testimony of Petitioner’s declarant), if necessary. Patent Owner
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`notes, however, that in the absence of Petitioner, it is unclear how these
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`proceedings could properly proceed.
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`Respectfully submitted,
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`/John R. Kasha/
`John R. Kasha (Reg. No. 53,100)
`Lead Counsel for Patent Owner
`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
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`/Chun M. Ng/
`Chun M. Ng (Reg. 36,878)
`Lead Counsel for Petitioner
`Perkins Coie, LLP
`1201 Third Ave., Suite 4900
`Seattle, WA 98101-2099
`Tel. 206-359-8000
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`Dated: January 3, 2017
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`2 Mobile Telecommunications Technologies LLC v. Microsoft Corporation, 2:15-
`cv-02122- JRG-RSP (EDTX).
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`5
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`Dated: January 3, 2017
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. § 1.550(f), a copy of Joint Motion to
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`Terminate Proceeding Pursuant to 35 U.S.C. § 317 and the supporting exhibits
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`filed by the Mobile Telecommunications Technologies, LLC on January 3, 2017
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`was duly served via electronic mail upon CNg@perkinscoie.com (Chun M. Ng),
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`CSCampbell@perkinscoie.com (Chad S. Campbell), TWimsatt@perkinscoie.com
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`(Theodore H. Wimsatt), JCrop@perkinscoie.com (Jared W. Crop), and
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`Patentprocurement@perkinscoie.com - counsel of record for Microsoft
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`Corporation (“Petitioner”).
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`The parties have agreed to electronic service in this matter.
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`Respectfully submitted,
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`/John R. Kasha/
`John R. Kasha (Reg. No. 53,100)
`Lead Counsel for Patent Owner
`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
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`Dated: January 3, 2017
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