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`IPR2017-00606
`PATENT NO. 8,694,657
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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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`MICROSOFT CORPORATION
`Petitioner
`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner
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`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
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`__________________________________________________________________
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`MICROSOFT CORPORATION AND WINDY CITY INNOVATIONS,
`LLC’S JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO
`37 C.F.R. § 317 AND 37 C.F.R. § 42.74
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`Case No. IPR2017-00606
`__________________________________________________________________
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`IPR2017-00606
`PATENT NO. 8,694,657
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and a conference call with
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`the Patent Trial and Appeal Board on April 19, 2017 in which the Board authorized
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`the Parties to file the present motion, Petitioner Microsoft Corporation and Patent
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`Owner Windy City Innovations LLC (the “Parties”) jointly request termination of
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`the inter partes review of U.S. Patent No. 8,694,657, Case No. IPR2017-00606,
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`without prejudice to either Party.
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`1. Termination as to the Patent Owner and Petitioner is Appropriate
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`The Parties have settled their dispute and have agreed to request termination
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`of this inter partes review proceeding. Specifically, the Parties have settled their
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`related district court litigation, and the case has been dismissed with prejudice.
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`Windy City Innovations, LLC v. Microsoft Corporation, 4:16-cv-01729) (N.D.
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`Cal.) (D.I. 82). On a conference call with the Board on April 19, 2017, the Board
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`authorized the filing of this joint motion for termination.
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`2. Treatment of Settlement Agreement as Business Confidential
`Information
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`Pursuant to 37 C.F.R. § 42.74(c), the Parties’ settlement agreement has been
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`made in writing and a true and correct copy of the settlement agreement is being
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`filed concurrently with the present motion as Exhibit 2001. As per the Board’s
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`request on the April 19, 2017 conference call, the parties also state that no other
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`settlement agreements concerning this proceeding or the patent-at-issue exist
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`between the Parties.
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`IPR2017-00606
`PATENT NO. 8,694,657
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`The Parties hereby jointly request that the settlement agreement be treated as
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`business confidential information and be kept separate from the files of the above-
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`captioned IPR pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`3. Conclusion
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`For the foregoing reasons, the Parties jointly and respectfully request
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`termination of the present proceeding without prejudice to either Party.
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`Dated April 24, 2017
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`Respectfully submitted,
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`/Peter Lambrianakos /
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
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`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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`EXHIBIT LIST
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`IPR2017-00606
`PATENT NO. 8,694,657
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`Exhibit
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`Description
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`2001
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`Settlement Agreement
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`IPR2017-00606
`PATENT NO. 8,694,657
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) & 42.105(b)
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`A copy of MICROSOFT CORPORATION AND WINDY CITY
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`INNOVATIONS, LLC’S JOINT MOTION TO TERMINATE PROCEEDING
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`PURSUANT TO 37 C.F.R. § 317 AND 37 C.F.R. § 42.74 with Exhibit 2001 has
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`been served on Petitioner’s counsel of record at the correspondence of the
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`Petitioner as follows:
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`By Email:
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C., 20005
`Tel. 202-736-8492
`Fax. 202-736-8711
`iprnotices@sidley.com
`jmicallef@sidley.com
`By Email:
`Herman F. Webley
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C., 20005
`Tel. 202-736-8609
`Fax. 202-736-8711
`hwebley@sidley.com
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`April 24, 2017
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`By:
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`By Email:
`John W. McBride
`SIDLEY AUSTIN LLP
`1 South Dearborn St.
`Chicago, Illinois 60603
`Tel. 312-853-7014
`Fax. 312-853-7036
`jwmcbride@sidley.com
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`By Email:
`Todd M. Siegel
`KLARQUIST SPARKMAN LLP
`121 SW Salmon Street, Ste. 1600
`Portland, OR 97204
`Tel. 503-595-5300
`Fax. 503-595-5301
`todd.siegel@klarquist.com
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`/Peter Lambrianakos /
`Peter Lambrianakos (Reg. No. 58,279)
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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