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`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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`GARMIN INTERNATIONAL, INC.
`Petitioner
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`v.
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`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES
`Patent Owner
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`____________
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`IPR2017-01058
`Patent 6,434,212
` ____________
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, Patent Owner and
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`Petitioner jointly request termination of Inter Partes Review No. IPR2017-01058.
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`The Board authorized the parties on November 9, 2017 to file this motion and a
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`request that the settlement agreement be treated as business confidential
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`information and be kept separate from the file of the involved patent.
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`Patent Owner and Petitioner respectfully submit that termination is
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`appropriate because they have entered into a confidential written agreement fully
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`resolving the dispute involving the patent at issue in the above-captioned Inter
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`Partes Review and the litigation between Patent Owner and Petitioner.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the parties
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`are filing herewith a true copy of the confidential written agreement along with a
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`request to treat it as business confidential information and keep it separate from the
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`file of the involved patent. See Confidential Exhibit EX1032. The parties represent
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`that there are no collateral agreements, understandings, or other agreements
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`between the parties made in connection with, or in contemplation of, the
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`termination of the present proceeding and that EX1032 represents a true and
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`accurate copy of the agreement between the parties that resolves this proceeding.
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`The parties have filed a joint motion to dismiss with prejudice the case
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`styled, Blackbird Tech LLC d/b/a Blackbird Technologies v. Garmin International,
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`Inc. and Garmin USA, Inc., Case No. 16-CV-689 (D. Del.), in which the patent-at-
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`issue had been asserted. The parties represent that the patent-at-issue also is
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`asserted in the following district court litigations that remain pending: Blackbird
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`Tech LLC d/b/a Blackbird Technologies v. Fitbit, Inc., Case No. 16-CV-683 (D.
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`Del.), Blackbird Tech LLC d/b/a Blackbird Technologies v. Timex Group USA,
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`Inc., Case No. 16-CV-686 (D. Del.), Blackbird Tech LLC d/b/a Blackbird
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`Technologies v. TomTom, Inc., Case No. 16-CV-687 (D. Del.), Blackbird Tech
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`LLC d/b/a Blackbird Technologies v. Wahoo Fitness, Inc., Case No. 16-CV-688
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`(D. Del.). The patent-at-issue also is presently the subject of Inter Partes Review
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`Petitions, which have not yet reached an institution decision, in the following
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`matters: IPR2017-2012, IPR2017-2023, and IPR2017-2025.
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`This request is proper because of the early stage of this proceeding. The
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`Inter Partes Review in this matter was recently instituted by the Board on
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`September 29, 2017, Patent Owner has not yet filed its Patent Owner Response,
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`and no final written decision on the merits has been entered. Further, this request
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`is proper because of the public policy favoring settlement of litigation and
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`settlement of proceedings before the Board. For at least these reasons, Patent
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`Owner and Petitioner submit that termination is appropriate.
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`Dated: November 10, 2017
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`Respectfully submitted,
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`BY: /s/ Jason R. Mudd
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`Jason R. Mudd, Reg. No. 57,700
`Adam P. Seitz, Reg. No. 52,206
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jason.mudd@eriseip.com
`adam.seitz@eriseip.com
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`Paul R. Hart, Reg. No. 59,646
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd.
`Suite 200
`Greenwood Village, CO 80111
`paul.hart@eriseip.com
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`BY: /s/ Walter D. Davis -w/ permission
`Walter D. Davis, Jr., Reg. No. 45,137
`Wayne M. Helge, Reg. No. 56,905
`Aldo Noto, Reg. No. 35,628
`Davidson, Berquist Jackson &
`Gowdey LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22012
`(571) 765-7700
`wdavis@dbjg.com
`whelge@dbjg.com
`anoto@dbjg.com
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`Attorneys For Patent Owner
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`Attorneys For Petitioner
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing
`document was served on November 10, 2017 via electronic mail directed to
`the counsel of record for Patent Owner as follows:
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`Walter D. Davis, Jr., Reg. No. 45,137
`Wayne M. Helge, Reg. No. 56,905
`Aldo Noto, Reg. No. 35,628
`Davidson, Berquist Jackson & Gowdey LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22012
`(571) 765-7700
`wdavis@dbjg.com
`whelge@dbjg.com
`anoto@dbjg.com
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`Attorneys For Patent Owner
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`BY:
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` /s/ Jason R. Mudd
`Jason R. Mudd, Reg. No. 57,700
`Lead Counsel for Petitioner
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