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`Paper No.
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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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`
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`FITBIT, INC.,
`Petitioner,
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`v.
`
`LOGANTREE LP,
`Patent Owner
`________________
`
`IPR2017-00258
`Patent 6,059,576
`
`________________
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`JOINT MOTION TO TERMINATE PROCEEDING
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`
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`Joint Motion to Terminate Proceeding
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`INTRODUCTION
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`IPR2017-00258
` U.S. Patent No. 6,059,576
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`
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`Petitioner Fitbit, Inc. (“Fitbit”) and Patent Owner LoganTree LP
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`(“LoganTree”) have entered into an agreement, effective November 16, 2016, that,
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`among other things, resolves the above-captioned inter partes review of U.S.
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`Patent No. 6,059,576, Case No. IPR2017-00258 (the “Review”). The Board
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`authorized the parties to file a joint motion to terminate the Review in an email
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`dated January 31, 2017. Accordingly, pursuant to 35 U.S.C. § 317 and 37 C.F.R. §
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`42.74, the parties jointly move to terminate the Review. As part of the
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`authorization, the Board requested submission of a true copy of the parties’ written
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`agreement, which is filed herewith.
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`THE AGREEMENT
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`The parties have entered into a written Settlement Agreement (the
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`“Agreement”) that contemplates the dismissal of all pending litigation between the
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`parties. There are no other agreements, oral or written, between the parties made in
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`connection with, or in contemplation of, the termination of this Review. A true and
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`correct copy of the Agreement is filed separately and concurrently with this
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`motion, as Exhibit FTBT-1024, along with a request to treat the Agreement as
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`business confidential information under 37 C.F.R. § 42.74(c).
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`As part of the Agreement, the parties have agreed to jointly request
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`termination of the present inter partes review and also the co-pending inter partes
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`
`
`–1–
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`
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`Joint Motion to Terminate Proceeding
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`review IPR2017-00256 filed by Fitbit against U.S. Patent No. 6,059,576 owned by
`
`
`
`IPR2017-00258
` U.S. Patent No. 6,059,576
`
`LoganTree. The parties have also agreed to dismiss, with prejudice, the related
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`litigation in the Northern District of California: LoganTree LP v. FitBit, Inc., case
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`no. 3:16-cv-02443.
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`WHY TERMINATION IS APPROPRIATE
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`Termination of this Review during this stage of the proceedings in view of
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`the Agreement is appropriate. The applicable statute provides that termination of
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`the inter partes review is appropriate because the Office has not yet decided the
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`merits of the proceeding. Moreover, this proceeding is at a sufficiently early stage
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`where no motions or actions are outstanding and the Board has not invested
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`significant
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`resources
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`in
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`this proceeding. Finally, strong public policy
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`considerations favor terminating the inter partes review as a result of the
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`settlement between the parties.
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`The applicable statute provides that an inter partes review proceeding “shall
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`be terminated with respect to any petitioner upon the joint request of the petitioner
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`and the patent owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added).
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`Here, the Board has not yet decided the merits of the present inter partes review
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`proceeding, and so under 35 U.S.C. § 317(a) the proceeding should be terminated
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`with respect to Petitioner. And, because Fitbit is the only petitioner in this inter
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`
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`–2–
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`
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`Joint Motion to Terminate Proceeding
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`partes review, no petitioner will remain, and the Office may terminate the review
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`
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`IPR2017-00258
` U.S. Patent No. 6,059,576
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`in its entirety as provided by 35 U.S.C. § 317(a).
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`The proceeding is at a sufficiently early stage where no motions or actions
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`are outstanding and the Board has not invested significant resources in this
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`proceeding. Patent Owner’s Preliminary Response has not yet been filed and the
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`Board has yet to make an institution decision in this proceeding. No public interest
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`factors militate against termination of this proceeding with respect to both
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`Petitioner and Patent Owner in light of the circumstances of this proceeding.
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`Both Congress and federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
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`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
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`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed.
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`Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950
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`(1986). The Federal Circuit also places a particularly strong emphasis on
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`settlement. For example, it endorses the ability of parties to agree to never
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`challenge validity as part of a settlement. See Flex-Foot, Inc. v. CRP, Inc., 238
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`F.3d 1362, 1370 (Fed. Cir. 2001); see also Cheyenne River Sioux Tribe v. U.S., 806
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`F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
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`antagonism and hostility between parties).
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`
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`–3–
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`
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`Joint Motion to Terminate Proceeding
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`Maintaining this Review after Fitbit’s settlement with LoganTree would
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`IPR2017-00258
` U.S. Patent No. 6,059,576
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`
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`discourage future settlements by removing a primary motivation for settlement:
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`eliminating litigation risk by resolving the parties’ disputes and ending the pending
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`proceedings between them. For patent owners, litigation risks include the potential
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`for their patents to be invalidated. If a patent owner knows that an inter partes
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`review is likely to continue regardless of settlement, it can create a strong
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`disincentive for the patent owner to settle.
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`
`
`
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`
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`–4–
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`
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`Joint Motion to Terminate Proceeding
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`IPR2017-00258
` U.S. Patent No. 6,059,576
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`
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`
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`For the foregoing reasons, Fitbit and LoganTree jointly and respectfully
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`CONCLUSION
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`request that the Board terminate this Review in its entirety.
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`Respectfully submitted,
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`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Reg. No. 50,271
`HAYNES AND BOONE, LLP
`Tel: (214) 651-5116
`
`
`/William H. Mandir /
`William H. Mandir
`Reg. No. 32,156
`Lead Counsel for Patent Owner
`SUGHRUE MION PLLC
`Tel: (202) 663-7458
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`
`
`
`–5–
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`
`
`
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`
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`Dated: March 13, 2017
`
`
`Dated: March 13, 2017
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`
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`
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`Joint Motion to Terminate Proceeding
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`
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`CERTIFICATE OF SERVICE
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`IPR2017-00258
` U.S. Patent No. 6,059,576
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`
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
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`service was made on the Patent Owner as detailed below.
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`Date of service March 13, 2017
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`Manner of service Electronic Mail
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`Documents served Joint Motion to Terminate Proceeding
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`Exhibit FTBT-1024
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`
`William H. Mandir (wmandir@sughrue.com)
`Chandran B. Iyer (cbiyer@ sughrue.com)
`Carl J. Pellegrini (cpellegrini@sughrue.com)
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`SUGHRUE MION PLLC
`c/o William H. Mandir.
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`
`
`
`
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Reg. No. 50,271
`HAYNES AND BOONE, LLP
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`–6–
`
`Persons served
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