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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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`D-Link Systems, Inc.,
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`Petitioner,
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`v.
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`Chrimar Systems, Inc.
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`Patent owner,
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`Case: PTAB-IPR2017-00752
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`U.S. Patent No. 8,942,107
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`JOINT MOTION TO TERMINATE THE PROCEEDING
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`IPR2017-00752
`U.S. Patent No. 8,942,107
`Joint Motion To Terminate
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Under 35 U.S.C. § 317(a), Petitioner, D-Link Systems, Inc., and Patent
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`Owner, ChriMar Systems, Inc., jointly request that the Board terminate this
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`proceeding. The parties have reached a settlement that resolves their dispute
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`concerning the patent at issue in this proceeding. Given that D-Link Systems, Inc.
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`is the only Petitioner in this proceeding, the settlement effectively resolves all
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`disputes, and this entire proceeding should be dismissed as to both Petitioner and
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`Patent Owner.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`U.S. Patent No. 8,942,107 (“the ’107 patent”) is the subject of this
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`proceeding and is one of four patents asserted against Petitioner in Civil Action
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`6:15-cv-00653 pending before the United States District Court for the Eastern
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`District of Texas.
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`2.
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`On January 23, 2017, the Petitioner filed its Petition for Inter Parte
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`Review on claims 1, 5, 31, 43, 70, 72, 74, 75, 83, 103, 104, 111, 123, and 125 of
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`the ’107 patent (Paper 2) and concurrently filed a Motion for Joinder of IPR2016-
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`01391 concerning the same patent (Paper 3).
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`3.
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`The Board has not issued its Decision to Institute Inter Parte Review
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`in this proceeding.
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`IPR2017-00752
`U.S. Patent No. 8,942,107
`Joint Motion To Terminate
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`4.
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`On March 20, 2017, the parties reached a settlement that resolves their
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`dispute with respect to ChriMar Systems, Inc.’s patent portfolio, including the ’107
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`patent. In accordance with 37 C.F.R. § 42.74(b), the parties submit a true and
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`correct copy of the settlement agreement as Exhibit 1019 with the designation
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`“Parties and Board Only.”1 Pursuant to the settlement agreement, the parties have
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`agreed to seek termination of this proceeding.
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`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`Termination of this proceeding is proper. The proceeding is in a relatively
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`early stage, the Board has not issued its Decision to Institute Inter Parte Review in
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`this proceeding and has not yet decided the merits of this proceeding. As required
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`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the parties have provided a
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`true and correct copy of their settlement agreement (Exhibit 1019), and there is no
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`other agreement, oral or written, between the parties made in connection with, or in
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`contemplation of, the termination of this proceeding. This agreement settles all
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`litigation, including this proceeding, between the parties with respect to the ’107
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`1 Together with this motion, the parties file a joint motion requesting that the Board
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`treat Exhibit 1019 as business confidential information, keep it separate from the
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`files of the involved patent, and make it available only to the entities and under the
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`conditions identified in 37 C.F.R. § 42.74(c).
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`- 2 -
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`IPR2017-00752
`U.S. Patent No. 8,942,107
`Joint Motion To Terminate
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`patent. Accordingly, the Board should terminate this proceeding. See Sanofi-
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`Aventis U.S. v. Genentech, Inc., IPR2015- 01624, Paper 13 (P.T.A.B. Sep. 2, 2016)
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`(terminating an inter partes review under similar circumstances).
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`Attorney for Petitioner
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`/David Hoffman/
`David Hoffman, Reg. No. 54,174
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`Attorney for Patent Owner
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`/Justin S. Cohen/
`Justin S. Cohen, Reg. No. 59,964
`Justin.Cohen@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
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`Respectfully submitted,
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`Date: March 30, 2017
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`IPR2017-00752
`U.S. Patent No. 8,942,107
`Joint Motion To Terminate
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`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the foregoing motion is being served
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`via electronic mail (e-mail) to Patent Owner counsels of record
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`(Chrimar@tklaw.com).
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`/Christine Rogers/ __________
`Christine Rogers
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`650-839-5092
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`Date: March 30, 2017
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