`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLIR SYSTEMS, INC.,
`FLIR MARITIME US, INC. (F/K/A RAYMARINE, INC.),
`and NAVICO, INC.,
`Petitioners
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`Patent Owner
`____________
`
`Case IPR2017-009461
`Patent No. 7,268,703 B1
`____________
`
`
`JOINT MOTION BY PETITIONER NAVICO, INC. AND PATENT
`OWNER TO TERMINATE PETITIONER NAVICO, INC. PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`1 Navico, Inc. was joined as a party to this proceeding via a Motion for Joinder in
`IPR2017-02051.
`
`LEGAL02/34732009v1
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Navico
`
`Inc. (“Navico”) and Patent Owner Garmin Switzerland GmbH (“Garmin”)
`
`jointly request termination of the inter partes review of U.S. Patent No.
`
`7,268,703, Case No. IPR2017-00946 with respect to Petitioner, Navico, Inc.
`
`Navico was joined as a party to IPR2017-00946 pursuant to the Board’s
`
`Decision (Paper 8) in IPR2017-02051. Patent Owner acknowledges that the IPR
`
`will continue with respect to Petitioner FLIR Systems, Inc. and FLIR Maritime
`
`US, Inc. On February 14, 2018, the Board authorized the parties to file this Joint
`
`Request.
`
`I.
`
`Termination of Case No. IPR2017-00946 With Respect
`
`to
`
`Petitioner Navico, Inc. Would Be Appropriate.
`
`Termination of Case No. IPR2017-00946 with respect to the Petitioner
`
`Navico, Inc. by the PTAB is appropriate. The parties have executed a
`
`settlement agreement that resolves all of their disputes concerning U.S. Patent
`
`No. 7,268,703—expressly including the present IPR. This case is at a
`
`sufficiently early stage of the trial, and no motions or petitions are outstanding
`
`in this case, other than Patent Owner’s Motion to Amend (Paper 15). Further,
`
`the parties entered into a Confidential Settlement and Patent License
`
`Agreement (the “Agreement,” attached hereto as Exhibit 2006). The Agreement
`
`requires both parties to terminate all disputes, including Inter Partes Review
` 2
`
`
`
`Proceeding No. 2017-00946 and Garmin Switzerland GmbH, et al. v. Navico, Inc.,
`
`et al., Case No. 2:16-cv-2706 (D. Kan.). Therefore, termination of this IPR with
`
`respect to Petitioner Navico, Inc. is appropriate because (i) the IPR is at a
`
`sufficiently early stage of the trial, (ii) the parties have settled their disputes, (iii)
`
`Patent Owner has agreed to dismiss the related litigation, and (iv) the parties to
`
`this IPR agree that this inter partes review should be terminated with respect to
`
`Petitioner Navico, Inc.
`
`As set forth in 35 U.S.C. § 317 and 37 C.F.R. § 42.74, the Agreement
`
`between Navico and Garmin has been made in writing, and a true and correct copy
`
`is being filed with the Patent Office as Exhibit 2006 to this Joint Motion. The
`
`parties represent that there are no collateral agreements, understandings, or other
`
`agreements between the parties made in connection with, or in contemplation of,
`
`the termination of the present proceeding, and that Ex. 2006 represents a true and
`
`accurate copy of the agreement between the parties that resolves this proceeding.
`
`As stated in 35 U.S.C. § 317(a), because Navico and Garmin request this
`
`termination, no estoppel under 35 U.S.C. § 315(e) shall attach as to Petitioner
`
`Navico. Further, a joint request to treat the Agreement as business confidential
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is filed
`
`concurrently herewith.
`
` 3
`
`
`
`Therefore, Navico and Garmin respectfully request termination of the inter
`
`partes review of U.S. Patent No. 7,268,703, Case No. IPR2017-00946 with
`
`respect to Petitioner Navico, Inc.
`
`February 16, 2018
`
`
`
`Respectfully Submitted,
`
`
`By: /s/ Heath J. Brigg________
`
`Heath J. Brigg (Reg. No. 54,919)
`William M. Fisher (Reg. No. 63,255)
`GREENBERG TRAURIG, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Telephone: (303) 572-6500
`Facsimile: (303) 572-6540
`Navico-IPRs@gtlaw.com
`
`Joshua L. Raskin (Reg. No. 40,135)
`GREENBERG TRAURIG, LLP
`MetLife Building
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 801-6930
`Navico-IPRs@gtlaw.com
`
`
`Attorneys for Petitioner Navico, Inc.
`
`
`
` 4
`
`
`
`By /s/ Jennifer C. Bailey
`
`Jennifer C. Bailey, Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`ERISE IP, P.A
`6201 College Boulevard, Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`
`Attorneys for Patent Owner
`
`
`
`
`
`
`
` 5
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that a true copy of the Joint
`Motion By Petitioner Navico, Inc. And Patent Owner To Terminate Petitioner
`Navico, Inc. Pursuant To 35 U.S.C. § 317 And 37 C.F.R. § 42.74 is served via
`Electronic Mail this 16th day of February 2018, in their entireties on the following
`lead and back-up counsel for Petitioner, FLIR Systems, Inc. & FLIR Maritime US,
`Inc. (f/k/a Raymarine, Inc.):
`Exhibit 2006 is not being served, as it is business confidential information.
`
`
`Brian Ferguson (Reg. No. 36,801)
`Anish R. Desai (Reg. No. 73,760)
`Christopher Pepe (Reg. No. 73,851)
`Stephen P. Bosco, Pro Hac Vice
`Weil Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`Telephone: (202) 682-8000
`FLIR.703.IPR@weil.com
`
`Heath J. Brigg (Reg. No. 54,919)
`William M. Fisher (Reg. No. 63,255)
`GREENBERG TRAURIG, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Telephone: (303) 572-6500
`Facsimile: (303) 572-6540
`Navico-IPRs@gtlaw.com
`
`Joshua L. Raskin (Reg. No. 40,135)
`GREENBERG TRAURIG, LLP
`MetLife Building
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 801-6930
`Navico-IPRs@gtlaw.com
`
` 6
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Jennifer C. Bailey/
`Jennifer C. Bailey, Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`ERISE IP, P.A.
`7015 College Boulevard, Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`
`ATTORNEYS FOR PATENT OWNER
`
`
`
` 7
`
`
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