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`Joint Motion to Terminate, IPR2017-01039
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`U.S. Patent 7,231,379
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`Jonathan Stroud
`Reg. No. 72,518
`jonathan@unifiedpatents.com
`Unified Patents Inc.
`1875 Connecticut Ave. NW,
`Floor 10
`Washington, D.C., 20009
`Telephone: (202) 805-8931
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`
`
`Roshan Mansinghani
`Reg. No. 62,429
`roshan@unifiedpatents.com
`Unified Patents Inc.
`13355 Noel Road, Suite 1100
`Dallas, TX, 75240
`Telephone: (214) 945-0200
`
`
`Jason R. Mudd, Reg. No. 57,700
`Eric A. Buresh, Reg. No. 50,394
`jason.mudd@eriseip.com
`eric.buresh@eriseip.com
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`UNIFIED PATENTS INC.
`Petitioner
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`v.
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`GUADA TECHNOLOGIES LLC
`Patent Owner
`
`IPR2017-01039
`U.S. Patent 7,231,379
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`JOINT MOTION TO DISMISS AND TERMINATE THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT 7,231,379
`UNDER 37 C.F.R. 42.71(A)
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`Joint Motion to Terminate, IPR2017-01039
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`U.S. Patent 7,231,379
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`Pursuant to 37 C.F.R. 42.71(a), Petitioner Unified Patents Inc.
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`(“Unified”) and Patent Owner Guada Technologies LLC (“Guada”) jointly
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`requests dismissal and termination of the petition for Inter Partes Review of
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`U.S. Patent 7,231,379 in IPR2017-01039.
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`Petitioner and Patent Owner have entered into a written confidential
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`settlement agreement that fully resolves this matter. The Parties are
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`concurrently filing a copy of the settlement agreement as EX1027 along with
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`a request to treat it as confidential business information pursuant to 35
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`U.S.C. § 317(b). The undersigned represents that there are no other
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`agreements, oral or written, between the parties made in connection with, or
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`in contemplation of, the termination of the present proceeding and that
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`EX1027 represents a true and accurate copy of the agreement between the
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`parties that resolves the present proceeding.
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`On June 19, 2017, the Parties informed the Board of the settlement via
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`e-mail and requested authorization to file a joint motion to terminate the
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`petition with respect to both the Patent Owner and the Petitioner. As set
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`forth in an e-mail dated June 20, 2017, the Board authorized the filing of the
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`requested joint motion to terminate this petition. Accordingly, Petitioner
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`1
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`and Patent Owner jointly request termination of the present proceeding.
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`Joint Motion to Terminate, IPR2017-01039
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`U.S. Patent 7,231,379
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`Public policy favors terminating the present petition for inter partes
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`review. Congress and federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v.
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`August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to
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`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d
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`1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert.
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`denied, 479 U.S. 950 (1986). The Federal Circuit places a particularly strong
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`emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
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`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
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`antagonism and hostility between parties). And, the Board’s Trial Practice
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`Guide stresses that “[t]here are strong public policy reasons to favor
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`settlement between the parties to a proceeding.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Ending this petition for IPR early promotes the Congressional goal of
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`establishing a more efficient patent system by limiting unnecessary and
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`counterproductive costs. See Changes to Implement Inter Partes Review
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`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
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`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
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`Permitting termination provides certainty and fosters an environment that
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`Joint Motion to Terminate, IPR2017-01039
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`U.S. Patent 7,231,379
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`promotes settlements, creating a timely, cost-effective alternative to
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`litigation.
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`Additionally, termination of this petition for IPR is appropriate as the
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`Board has not yet “decided the merits of the proceeding.” See, e.g., Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
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`Unified filed its petition for inter partes review on March 21, 2017. The
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`parties have now settled their dispute, and have reached agreement to
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`terminate the petition. The USPTO can conserve its resources through
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`terminating now, removing the need for the Board to further consider the
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`arguments, to issue an Institution Decision, and to render a Final Decision.
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`Furthermore, no other party’s rights will be prejudiced by termination of this
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`petition.
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`There are three district court litigations asserting the patent-at-issue
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`currently pending: Guada Technologies LLC v. 7Digital Inc., Case No. 2:16-
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`cv-1147 (E.D. Texas); Guada Technologies LLC v. eMusic.com Inc., Case
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`No. 2:16-cv-1150 (E.D. Texas); and Guada Technologies LLC v. Smule Inc.,
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`Case No. 2:16-cv-1158 (E.D. Texas). The cases against 7Digital Inc. and
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`Smule Inc. are set for a scheduling conference on July 19, 2017; however, no
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`dates for a claim construction hearing or trial have been set. No scheduling
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`3
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`Joint Motion to Terminate, IPR2017-01039
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`U.S. Patent 7,231,379
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`conference or case schedule has been set for the case against eMusic.com
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`Inc.
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`Therefore, Unified and Guada respectfully request termination of the
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`petition for Inter Partes Review of U.S. Patent 7,231,379 (IPR2017-01039).
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`
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`Date: June 21, 2017
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`Respectfully submitted,
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`___________________________
`Roshan Mansinghani, Reg. No. 62,429
`Senior Patent Counsel
`Unified Patents Inc.
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`/s/ David Bennett
`___________________________
`David Bennett, Reg. No. 43,493
`Direction IP Law
`Counsel for Guada Technologies LLC
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`4
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`Joint Motion to Terminate, IPR2017-01039
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`U.S. Patent 7,231,379
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Joint
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`Motion to Dismiss and Terminate the Petition for Inter Partes Review of
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`U.S. Patent 7,231,379 was served on June 21, 2017 via electronic mail
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`directed to the attorney of record for the patent at the following address:
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`dbennett@directionip.com. Patent Owner has consented to electronic
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`service.
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`Date: June 21, 2017
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`Respectfully submitted,
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`
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`___________________________
`Roshan Mansinghani
`Reg. No. 62,429
`roshan@unifiedpatents.com
`Unified Patents Inc.
`13355 Noel Road, Suite 1100
`Dallas, TX, 75240
`Telephone: (214) 945-0200
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`5
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