`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`CIM MAINTENANCE INC.,
`
`Petitioner,
`
`
`v.
`
`P&RO SOLUTIONS GROUP, INC.
`
`Patent Owner.
`
`__________
`
`Case IPR2017-00516
`
`Patent 8,209,205
`
`__________
`
`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
`
`
`
`
`
`
`130733.00110/106332858
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.74, Patent Owner P&RO Solutions Group, Inc.
`
`(“P&RO”) and Petitioner CiM Maintenance Inc. (“CiM”) jointly request
`
`termination of Case IPR2017-00516, which is directed to claims 1-20 of U.S.
`
`Patent No. 8,209,205 (“the ‘205 Patent”).
`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317, P&RO and CiM jointly request termination of
`
`this inter partes review.
`
`
`
`II.
`
`EXPLANATION OF WHY TERMINATION IS APPROPRIATE
`
`The parties have reached a written agreement to terminate this IPR
`
`proceeding. A “Request That Agreement Be Treated as Business Confidential
`
`Information and Kept Separate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74”
`
`is being filed concurrently with this Joint Motion to Terminate. See 35 U.S.C. §
`
`317(b) (requiring parties to file agreements in writing with the Office).
`
`The Board previously provided authorization to file this motion on
`
`November 13, 2017.
`
`The patent involved in this proceeding, the ‘205 Patent, was held invalid
`
`under 35 U.S.C. § 101 by Judge Schroder in the Eastern District of Texas on
`
`
`130733.00110/106332858
`
`2
`
`
`
`
`March 31, 2017, and the underlying lawsuit was dismissed. P&RO Solutions
`
`Group, Inc. v. CiM Maintenance Inc., C.A. No. 6:16-cv-00095-RWS (E.D. Tex.).
`
`The parties involved in this proceeding believe that termination of this review is
`
`appropriate because the written agreement includes the P&RO’s agreement not to
`
`sue CiM for infringement of any claims of the ‘205 Patent or appeal the final
`
`judgment of the district court in the corresponding litigation in exchange for CiM
`
`agreeing to move to terminate these inter partes review proceedings.
`
`Therefore, termination of this case is appropriate because (1) final judgment
`
`has been entered in the corresponding district court litigation; (2) the written
`
`covenant not to sue between the parties settles all material disputes related to the
`
`‘205 Patent between the parties; and (3) the parties to this case agree that this inter
`
`partes review should be terminated.
`
`
`III.
`
`IDENTIFICATION OF ALL PARTIES IN RELATED LITIGATION
`
`P&RO and CiM are the only parties in the district court action referenced
`
`above. There are no other pending litigations between the parties.
`
`
`
`IV.
`
`IDENTIFICATION OF RELATED PROCEEDINGS BEFORE THE
`
`OFFICE
`
`There are currently no other proceedings before the Office concerning the
`3
`
`
`130733.00110/106332858
`
`
`
`
`‘205 Patent, nor are there any other proceedings before the Office involving both
`
`P&RO and CiM.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, P&RO and CiM respectfully request termination
`
`of the inter partes review of claims 1-20 of the ‘205 Patent.
`
`
`
`
`
`Dated: November 17, 2017
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /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
`
`/Abran J. Kean/
`
`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
`
`Counsel for Petitioner CiM Maintenance Inc.
`
`
`
`130733.00110/106332858
`
`4
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 17, 2017, the foregoing 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 was electronically filed with the Patent and Appeal Board using the
`
`PRPS system, which will send notification of such filing to all counsel of record,
`
`and mailed to counsel of record through Priorty Mail Express.
`
`Abran J. Kean, abran.kean@eriseip.com
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`
`
`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
`
`
`
`
`130733.00110/106332858
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
