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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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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`GENERAL ELECTRIC CO.,
`Petitioner,
`v.
`GROUPCHATTER, LLC,
`Patent Owner.
`____________
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`Case IPR2017-00313
`Patent 8,199,740
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`EXHIBIT LIST
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`Description
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`U.S. Patent No. 7,969,959 to Dabbs, III et al. (“the ’959 Patent”
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`U.S. Patent No. 8,199,740 to Dabbs, III et al. (“the ’740
`Patent”)
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`U.S. Patent No. 9,014,659 to Dabbs, III et al. (“the ’659
`Patent”)
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`U.S. Patent No. 8,588,207 to Dabbs, III et al. (“the ’207
`Patent”)
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`U.S. Patent No. 5,748,100 to Gutman et al. (“Gutman”)
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`U.S. Patent No. 5,918,158 to LaPorta et al. (“LaPorta”)
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`U.S. Patent No. 7,409,428 to Brabec et al. (“Brabec”)
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`U.S. Patent No. 5,644,568 to Ayerst et al. (“Ayerst”)
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`Declaration of Bruce Deer
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`Curriculum Vitae of Bruce Deer
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`Patent Owner’s November 11, 2015 Complaint against
`Petitioner
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`November 23, 2015 Service of Summons and Complaint
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`Patent Owner’s August 12, 2016 First Amended Complaint
`against Petitioner
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`U.S. Provisional App. No. 60/636,094 (“the ’094 Application”)
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`Patent Owner’s July 20, 2016 Infringement Contentions against
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`ii
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`Exhibit No.
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`Petitioner in the GE Litigation
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`Motorola Wireless Application Development Document
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`ReFLEX Wireless Data Technology by USA Mobility
`(“ReFLEX Paper”)
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`Patent Owner’s L.P.R. 6.2 Preliminary Claim Constructions in
`the GE Litigation
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`GE – GroupChatter Confidential Settlement and License
`Agreement (Parties and Board Only)
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`iii
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`Pursuant to 35 U.S.C. § 317(a), Petitioner GENERAL ELECTRIC CO.
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`(“GE” or “Petitioner”) and Patent Owner GROUPCHATTER, LLC
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`(“GROUPCHATTER”) jointly request termination of this inter partes review of
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`United States Patent No. 8,199,740, Case No. IPR2017-00313.
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`On November 22, 2016, Petitioner filed a Petition for Inter Partes Review
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`before the United States Patent Trial and Appeal Board. Patent Owner’s
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`preliminary response is not due until March 6, 2017. No decision as to whether to
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`institute trial in this proceeding has yet been entered and no final written decision
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`on the merits of this inter partes review proceeding has been entered. The parties
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`have settled their dispute, and have reached agreement to terminate this inter
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`partes review.
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`Generally, a proceeding will terminate after the filing of a settlement
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`agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,768 (Aug. 14, 2012). The Board authorized the filing of the instant Motion on
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`February 24, 2017.
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`IPR2013-00428, Paper No. 56 provides guidance as to the content of a
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`motion to terminate. There, the Board indicates that a joint motion, such as this
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`one, should (1) include a brief explanation as to why termination is appropriate; (2)
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`identify all parties in any related litigation involving the patents at issue, and the
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`status of each; and (3) identify any related proceedings currently before the Office.
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`1
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`IPR2013-00428, Paper No. 56 at 2. This Motion satisfies each of the above
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`requirements.
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`1. Reasons why termination is appropriate.
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`Termination of this proceeding by the PTAB is appropriate. This proceeding
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`is currently pending; however, no decision to institute trial has yet been entered.
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`Under 35 U.S.C. § 317(a), this proceeding “shall be terminated with respect to []
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`[P]etitioner” because the parties are jointly requesting termination and the Office
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`has not yet “decided the merits of the proceeding before the request for
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`termination is filed.” Further, GE and GROUPCHATTER have settled the
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`underlying dispute and entered into a Settlement Agreement. The Settlement
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`Agreement has been made in writing, and a true and correct copy is being filed
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`herewith as Exhibit 1019, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(b).1 The parties desire that the Settlement Agreement be maintained as
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`business confidential information under 37 C.F.R. § 42.74(c) and a separate joint
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`request to that effect is being filed on even date herewith. Pursuant to 35 U.S.C. §
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`317(a), no estoppel shall attach to GE or its privies.
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`1 The Settlement Agreement is being filed electronically via the PTAB E2E System
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`as “Parties and Board Only.”
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`2
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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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`The Challenged Patent, U.S. Patent No. 8,199,740, is at issue in the
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`following litigation (pending unless otherwise indicated):
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`Name
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`GroupChatter, LLC v. Slack
`Technologies, Inc.
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`GroupChatter, LLC v. Aclara
`Technologies LLC
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`GroupChatter, LLC v. Line
`Corporation et al.
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`GroupChatter, LLC v. Rakuten,
`Inc. et al.
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`GroupChatter, LLC v. General
`Electric Company et al.
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`Number
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`District
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`Filed
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`1-16-cv-04339 GAND 11/22/2016
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`1-16-cv-04231 GAND 11/11/2016
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`1-16-cv-03701 GAND 10/3/2016
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`1-16-cv-03567 GAND 9/22/2016
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`1-16-cv-00486 GAND 2/16/2016
`Terminated
`2/13/2017
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`The following USPTO proceedings are related:
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`IPR2017-00310 re US Patent 8,588,207
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`IPR2017-00311 re US Patent 9,014,659
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`IPR2017-00314 re US Patent 7,969,959
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`Requests for termination of the above proceedings are being filed on even date
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`herewith.
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`3
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`3. Related proceedings currently before the Office and status.
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`U.S. Patent Application No. 15/069,488, currently pending, is a continuation
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`of U.S. Patent Application No. 14/690,990, filed April 20, 2015, now U.S.
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`Patent No. 9,294,888, which is a continuation of U.S. Patent Application No.
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`14/075,347, filed November 8, 2013, now U.S. Patent No. 9,014,659, which is a
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`continuation of U.S. Patent Application No. 13/476,641, filed May 21, 2012,
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`now U.S. Patent No. 8,588,207, which is a continuation of U.S. Patent
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`Application No. 13/154,138, filed June 6, 2011, now U.S. Patent No. 8,199,740,
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`which is a continuation of U.S. Patent Application No. 11/303,025, filed
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`December 16, 2005, now U.S. Patent 7,969,959.
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`4. Future participation by Parties.
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`Petitioner will not further participate in these proceedings even if the Petition
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`is not terminated pursuant to this joint motion. Patent Owner reserves its right to
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`participate (including the right to seek exclusion of some or all the testimony of
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`Petitioner’s declarant), if necessary. Patent Owner notes, however, that in the
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`absence of Petitioner, it is unclear how these proceedings could properly proceed.
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`Therefore, GE and GROUPCHATTER respectfully request termination of
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`Case No. IPR2017-00313.
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`4
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`/Tarek N. Fahmi/
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`
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`Tarek N. Fahmi (Reg. No. 41,402)
`ASCENDA LAW GROUP, PC
`333 W. Santa Clara St., Suite 200
`San Jose, CA 95110
`Attorney for Patent Owner
`SIGNAL IP, INC.
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`Respectfully submitted,
`
`/David Pollock/
`
`
`David Pollock (Reg. No. 48,977)
`Jonathan Detrixhe (Reg. No. 68,556)
`REED SMITH, LLP
`101 Second Street, Suite 1800
`San Francisco, CA 94105
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`Attorneys for Petitioner
`GENERAL ELECTRIC CO.
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`Date: March 3, 2017
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`5
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