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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`GOOGLE INC.,
`Petitioner
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`v.
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
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`____________
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`
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`Case IPR2017-00536
`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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`GOOGLE INC.,
`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 IPR2017-00536
`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 IPR2017-00536
`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), Google Inc. (“Google” or “Petitioner”) and
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`Mobile Telecommunications Technologies, LLC (“Patent Owner”) (jointly, the
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`“Parties”) jointly request termination of IPR2017-00536, which is directed to U.S.
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`Patent No. 5,754,946 (“the ’946 Patent”).
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`On December 29, 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 is not due until April 20, 2017. 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 April 18, 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 IPR2017-00536
`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 in its entirety is warranted. See, e.g.,
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`Microsoft Corp. v. Mobile Telecommunications Technologies, LLC, IPR2015-
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`01576, Paper No. 9, p. 2 (P.T.A.B. January 19, 2017). Within the context of
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`Section 317(a), a decision on the merits must be something beyond a decision
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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 IPR2017-00536
`Patent No. 5,754,946
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`instituting trial. Otherwise the quoted phrase would be rendered meaningless
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`Joint Motion to Terminate Proceeding
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`because every “inter partes review instituted under this chapter” originates with a
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`decision instituting trial. Here, no decision on the merits has been made, and “this
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`proceeding is in its initial stages.” Microsoft Corp. v. Mobile Telecommunications
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`Technologies, LLC, IPR2015-01581, Paper No. 9, p. 2 (P.T.A.B. January 19,
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`2017). Moreover, Petitioner, Google, does not oppose Patent Owner in seeking
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`termination of this inter partes review proceeding altogether. Accordingly, the
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`Parties jointly request that the USPTO terminate this inter partes review in its
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`entirety for reasons similar to those identified by the Board in the above-cited
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`cases (IPR2015-01576 at Paper No. 9; IPR2015-01581 at Paper No. 9).
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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 a pending related litigation involving the ’946 Patent.
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`However, as indicated in the table below, that litigation is also resolved by the
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`parties settlement agreement.
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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
`Settled
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`3. Related proceedings currently before the Office and Status.
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`3
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`Case IPR2017-00536
`Patent No. 5,754,946
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`Joint Motion to Terminate Proceeding
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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
`IPR2017-00537
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`
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`Requestor/Petitioner
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`Status
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`Google Inc.
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`Motion to terminate filed
`concurrently
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`Accordingly, as discussed above, the Parties jointly request termination of
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`IPR2017-00536, which is directed to the ’946 Patent.
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`Dated: April 20, 2017
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`Dated: April 20, 2017
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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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`
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`/Michael T. Hawkins/
`Michael T. Hawkins
`(Reg. No. 57,867)
`Lead Counsel for Petitioner
`Fish & Richardson P.C.
`320 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel. 612-337-2569
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`4
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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 April 20, 2017
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`was duly served via electronic mail upon IPR19473-0361IP1@fr.com (Ref. 19473-
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`0361IP1), hawkins@fr.com (Michael T. Hawkins), nstephens@fr.com (Nicholas
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`Stephens), and bisenius@fr.com (Patrick J. Bisenius) - counsel of record for
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`Google Inc. (“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: April 20, 2017
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