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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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`CIM MAINTENANCE INC.,
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`Petitioner,
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`v.
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`P&RO SOLUTIONS GROUP, INC.
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`Patent Owner.
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`__________
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`Case IPR2017-00516
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`Patent 8,209,205
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`__________
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`OF CLAIMS 1-20 OF U.S. PATENT NO. 8,209,205 PURSUANT TO 35
`U.S.C. § 317 AND 37 C.F.R. § 42.74
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`130733.00110/106332858
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`Pursuant to 37 C.F.R. § 42.74, Patent Owner P&RO Solutions Group, Inc.
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`(“P&RO”) and Petitioner CiM Maintenance Inc. (“CiM”) jointly request
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`termination of Case IPR2017-00516, which is directed to claims 1-20 of U.S.
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`Patent No. 8,209,205 (“the ‘205 Patent”).
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`
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317, P&RO and CiM jointly request termination of
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`this inter partes review.
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`II.
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`EXPLANATION OF WHY TERMINATION IS APPROPRIATE
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`The parties have reached a written agreement to terminate this IPR
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`proceeding. A “Request That Agreement Be Treated as Business Confidential
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`Information and Kept Separate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74”
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`is being filed concurrently with this Joint Motion to Terminate. See 35 U.S.C. §
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`317(b) (requiring parties to file agreements in writing with the Office).
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`The Board previously provided authorization to file this motion on
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`November 13, 2017.
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`The patent involved in this proceeding, the ‘205 Patent, was held invalid
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`under 35 U.S.C. § 101 by Judge Schroder in the Eastern District of Texas on
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`130733.00110/106332858
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`2
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`March 31, 2017, and the underlying lawsuit was dismissed. P&RO Solutions
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`Group, Inc. v. CiM Maintenance Inc., C.A. No. 6:16-cv-00095-RWS (E.D. Tex.).
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`The parties involved in this proceeding believe that termination of this review is
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`appropriate because the written agreement includes the P&RO’s agreement not to
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`sue CiM for infringement of any claims of the ‘205 Patent or appeal the final
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`judgment of the district court in the corresponding litigation in exchange for CiM
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`agreeing to move to terminate these inter partes review proceedings.
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`Therefore, termination of this case is appropriate because (1) final judgment
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`has been entered in the corresponding district court litigation; (2) the written
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`covenant not to sue between the parties settles all material disputes related to the
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`‘205 Patent between the parties; and (3) the parties to this case agree that this inter
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`partes review should be terminated.
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`III.
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`IDENTIFICATION OF ALL PARTIES IN RELATED LITIGATION
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`P&RO and CiM are the only parties in the district court action referenced
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`above. There are no other pending litigations between the parties.
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`IV.
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`IDENTIFICATION OF RELATED PROCEEDINGS BEFORE THE
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`OFFICE
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`There are currently no other proceedings before the Office concerning the
`3
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`130733.00110/106332858
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`‘205 Patent, nor are there any other proceedings before the Office involving both
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`P&RO and CiM.
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`V.
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`CONCLUSION
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`For the foregoing reasons, P&RO and CiM respectfully request termination
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`of the inter partes review of claims 1-20 of the ‘205 Patent.
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`Dated: November 17, 2017
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`Respectfully submitted,
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`By: /Michael C. Greenbaum/
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`
` Michael C. Greenbaum (Reg. No. 28,419)
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Phone: (202) 772-5836
`Greenbaum@BlankRome.com
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`Counsel for Patent Owner
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`/Abran J. Kean/
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`Abran J. Kean (Reg. No. 58,540)
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`T: 913.777.5600
`F: 913.777.5600
`abran.kean@eriseip.com
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`Counsel for Petitioner CiM Maintenance Inc.
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`130733.00110/106332858
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 17, 2017, the foregoing JOINT
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`MOTION TO TERMINATE INTER PARTES REVIEW OF CLAIMS 1-20
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`OF U.S. PATENT NO. 8,209,205 PURSUANT TO 35 U.S.C. § 317 AND 37
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`C.F.R. § 42.74 was electronically filed with the Patent and Appeal Board using the
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`PRPS system, which will send notification of such filing to all counsel of record,
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`and mailed to counsel of record through Priorty Mail Express.
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`Abran J. Kean, abran.kean@eriseip.com
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
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`
`Eric A. Buresh, eric.buresh@eriseip.com
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`
`
`/Michael C. Greenbaum/
`Michael C. Greenbaum (Reg. No. 28,419)
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Phone: (202) 772-5836
`Greenbaum@BlankRome.com
`Counsel for Patent Owner
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`130733.00110/106332858
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