`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`ARRIS ENTERPRISES LLC
`Patent Owner
`
`___________________
`
`Case IPR2017-01963
`Patent 7,752,564
`___________________
`
`
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE (WITHDRAW) PROCEEDING
`PURSUANT TO 37 C.F.R. § 42.74
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Case IPR2017-01963
`U.S. Pat. No. 7,752,564
`
`
`I.
`
`Pursuant to 37 C.F.R. § 42.74, and the Board’s authorization provided on
`
`December 4, 2017, Petitioner Sony Corporation (“Sony”) and Patent Owner
`
`ARRIS Enterprises LLC and Real Party-in-Interest ARRIS International plc
`
`(together “ARRIS”) (collectively, “the Parties”) jointly request termination of Inter
`
`Partes Review No. IPR2017-01963 pursuant to settlement. As there are no other
`
`petitioners in this proceeding and the proceeding is still at an early stage, the
`
`Parties respectfully submit that termination of this proceeding is appropriate.
`
`II.
`
`STATEMENT OF FACTS
`
`Sony filed its petition in this proceeding for Inter Partes Review of U.S.
`
`Patent No. 7,752,564 (“the ’564 Patent”) on September 29, 2017. ARRIS’s
`
`Preliminary Response is due on January 5, 2018, and the Board has not yet issued
`
`its institution decision.
`
`On November 17, 2017, the Parties executed a detailed and legally binding
`
`and enforceable settlement agreement titled “Memorandum of Understanding”
`
`(MOU). Ex.-1014, Sect. 3. Among other things, the MOU settles all current
`
`disputes between the Parties and contains provisions requiring the Parties to
`
`terminate with prejudice their various legal actions (including specifically this
`
`proceeding and all of the litigations and proceedings related to the challenged
`
`patent) immediately upon execution of the MOU.
`
`
`
`- 1 -
`
`
`
`The MOU contains all the material terms and conditions related to the
`
`Case IPR2017-01963
`U.S. Pat. No. 7,752,564
`
`
`Parties’ settlement. The MOU also specifically provides for a final agreement
`
`implementing the terms set out in the MOU to be entered into no later than
`
`December 15, 2017. Id. at Sect. 3. The Parties certify that, at this time, no
`
`collateral agreements or understandings made in connection with, or in
`
`contemplation of, the termination of the proceeding exist. Should the final
`
`agreement come into existence before these proceedings are terminated, as
`
`required by the Rules, the Parties will contact the Board for authorization to file the
`
`final agreement along with a motion to treat it as business confidential and keep it
`
`separate from the file.
`
`In an email dated December 4, 2017, the Board authorized the Parties to file
`
`a joint motion to terminate and a joint request to file the settlement agreement as
`
`confidential business information. As required by the Board, the Parties are
`
`submitting a true copy of the agreement (Exhibit 1014) along with this joint motion
`
`to terminate and a joint request to file the settlement agreement as business
`
`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`III. ARGUMENT
`A joint motion to terminate generally “must (1) include a brief explanation
`
`as to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents at issue; (3) identify any related proceedings currently before
`
`
`
`- 2 -
`
`
`
`the Office; and (4) discuss specifically the current status of each such related
`
`Case IPR2017-01963
`U.S. Pat. No. 7,752,564
`
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
`
`28, 2014).
`
`The Board should terminate this proceeding as the Parties jointly request, for
`
`the following reasons.
`
`A. Brief explanation as to why termination is appropriate
`
`The proceeding is still at an early stage as no institution decision has yet
`
`been issued by the Board.
`
`The Parties have reached a settlement as to the ’564 Patent to end this
`
`dispute. A copy of the confidential settlement agreement pertaining to this case is
`
`filed concurrently herewith. See Ex.-1014. The Parties further jointly certify that
`
`there is no other agreement or understanding between them beyond Exhibit 1014
`
`made in connection with, or in contemplation of, the termination of the instant
`
`proceeding as set forth in 35 U.S.C. §317(b).
`
`The Parties respectfully submit that termination of this proceeding is
`
`appropriate because (a) this proceeding is at an early stage and no motions are
`
`outstanding; (b) the Parties have reached agreement to end their dispute concerning
`
`the ’564 Patent; (c) the Parties have agreed to dismiss the related district court and
`
`International Trade Commission litigation between themselves with respect to the
`
`
`
`- 3 -
`
`
`
`Case IPR2017-01963
`U.S. Pat. No. 7,752,564
`
`’564 Patent; (d) the Parties agree that this Inter Partes Review should be
`
`terminated; and (e) termination of this proceeding will preserve the Board’s
`
`resources and obviate the need for any more Board involvement in the present
`
`proceeding.
`
`The Board requested that Patent Owner advise the Board whether any
`
`litigation or proceeding involving the subject matter of the patent is contemplated
`
`in the foreseeable future. Whether or not anything is contemplated, Patent Owner
`
`cannot do so without disclosing confidential information regarding legal strategies
`
`and thus potentially waiving the attorney client privilege, and requests that the
`
`Board act on the motion without requiring such disclosure.
`
`B.
`
`Identity and status of parties in related litigation involving the patent
`
`The ’564 Patent was in dispute against Sony in ARRIS Solutions, Inc. et al v.
`
`Sony Interactive Entertainment LLC et al, Case 5:17-cv-02669-BLF (N.D. Cal.).
`
`On November 30, 2017, this case was dismissed pursuant to the settlement
`
`agreement between the Parties.
`
`The ’564 Patent is also in dispute against Sony in International Trade
`
`Commission Investigation No. 337-TA-1060, “Certain Consumer Electronic
`
`Devices, Including Televisions, Gaming Consoles, Mobile Phones and Tablets, and
`
`Network-Enabled DVD and Blu-Ray Players.” On November 20, 2017, that
`
`
`
`- 4 -
`
`
`
`Case IPR2017-01963
`U.S. Pat. No. 7,752,564
`
`investigation was stayed pending the filing of a motion to terminate the
`
`investigation pursuant to settlement.
`
`There are no other current or pending litigation proceedings involving the
`
`’564 Patent.
`
`C.
`
`Identity and status of any related proceedings before the Office
`
`There are no other related proceedings before the Office involving the ’564
`
`Patent.
`
`IV. CONCLUSION
`For at least the foregoing reasons, Sony and ARRIS respectfully request
`
`termination of this Inter Partes Review.
`
`Respectfully submitted,
`
`
`
`
`/Clifford A. Ulrich/
`Clifford A. Ulrich (Reg. No. 42,194)
`Counsel for Petitioner
`
`
`
`Date: December 8, 2017
`
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004
`
`
`
`
`
`
`- 5 -
`
`
`
`Case IPR2017-01963
`U.S. Pat. No. 7,752,564
`
`
`Respectfully submitted,
`
`
`
`
`/Robert E. Sokohl/
`Robert E. Sokohl (Reg. No. 36,013)
`Counsel for Patent Owner
`
`
`
`Date: December 8, 2017
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, NW
`Washington, D.C. 20005
` (202) 371-2600
`
`
`
`- 6 -
`
`
`
`
`
`Case IPR2017-01963
`U.S. Pat. No. 7,752,564
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies
`
`that
`
`the above-captioned JOINT
`
`MOTION TO TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. §
`
`317 AND 37 C.F.R. § 42.74 and all associated exhibits were served electronically
`
`in their entireties on December 8, 2017, upon the following parties by email:
`
`
`
`Robert E. Sokohl (Lead Counsel)
`Chandrika Vira (Back-up Counsel)
`Michelle K. Holoubek (Back-up Counsel)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`PTAB@skgf.com
`Rsokohl-PTAB@skgf.com
`Cvira-PTAB@skgf.com
`Holoubek@skgf.com
`
`
`
`Respectfully submitted,
`
`
`
`
`/Clifford A. Ulrich/
`Clifford A. Ulrich (Reg. No. 42,194)
`Counsel for Petitioner
`
`
`
`
`Clifford A. Ulrich (culrich@andrewskurthkenyon.com; Reg. No. 42,194) Lead
`Counsel
`
`Andrews Kurth Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212.425.7200
`Fax: 212.425.5288
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
