`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`COLLECTIVE MINDS GAMING CO. LTD.
`
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`
`Patent Owner.
`
`____________
`
`IPR2018-00354
`Patent 8,641,525
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
`AND JOINT REQUEST TO KEEP PAPERS SEPARATE
`AS BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`
`
`Pursuant to 35 U.S.C. §317 and 37 C.F.R. § 42.72, Patent Owner Ironburg
`
`IPR2018-00354
`Patent 8,641,525
`
`
`Inventions Ltd. and Petitioner Collective Minds Gaming Co. Ltd., (collectively,
`
`“the Parties”) jointly request termination of the above-captioned Inter Partes
`
`Review No. IPR2018-00354 (“the IPR”).
`
`The Parties have settled all of their disputes involving the IPR in a definitive
`
`Settlement Agreement executed on or around November 20, 2018. Pursuant to that
`
`Settlement Agreement, the Parties have agreed to settle and dismiss their related
`
`District Court litigation (Ironburg Inventions Ltd. v. Collective Minds Gaming Co.
`
`Ltd., Case No. 1:16-cv-04110-TWT (N.D. Geo.)) and all proceedings before the
`
`Patent Trial and Appeal Board (IPR2018-00354, IPR2018-00355, IPR2018-00356,
`
`and IPR2018-00357).
`
`
`
`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ Settlement Agreement made in
`
`contemplation of termination of the proceeding is in writing, and a true and correct
`
`copy of such document is being filed herewith electronically with access to “Parties
`
`and Board Only” as confidential EX2023. No other such agreements, written or
`
`oral, exist between or among the parties.
`
`The Parties hereby jointly request that the Settlement Agreement be treated
`
`as business confidential information and be kept separate from the files of the above
`
`captioned IPR pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`1
`
`
`
`I.
`
`Background
`
`IPR2018-00354
`Patent 8,641,525
`
`
`
`
`On January 3, 2018, Petitioner filed a request for Inter Partes Review of
`
`claims 1-11 and 13-20 of U.S. Patent No. 8,641,525 (the “ʼ525 Patent”). See
`
`IPR2018-00354, Paper 2. On June 7, 2018, the Board instituted Inter Partes
`
`Review in IPR2018-00354 on claims 1-11 and 13-20. See IPR2018-00354, Paper
`
`11. On September 14, 2018, Patent Owner filed a response. See IPR2018-00354,
`
`Paper 14. Petitioner has not yet filed a reply.
`
`
`
`On January 3, 2018 , Petitioner filed a request for Inter Partes Review of
`
`claims 1-2, 9-10, 15-18 and 21-24 of U.S. Patent No. 9,352,229 (the “ʼ229
`
`Patent”). See IPR2018-00355, Paper 2. On July 5, 2018, the Board instituted Inter
`
`Partes Review in IPR2018-00355 on claims 1-2, 9-10, 15-18 and 21-24. See
`
`IPR2018-00355, Paper 11. Patent Owner has not yet filed a response and Petitioner
`
`has not yet filed a reply.
`
`
`
`On January 3, 2018 , Petitioner filed a request for Inter Partes Review of
`
`claims 1-20 of U.S. Patent No. 9,089,770 (the “ʼ770 Patent”). See IPR2018-00356,
`
`Paper 2. On June 7, 2018, the Board instituted Inter Partes Review in IPR2018-
`
`00356 on claims 1-20. See IPR2018-00356, Paper 11. On September 14, 2018,
`
`Patent Owner filed a response. See IPR2018-00356, Paper 14. Petitioner has not
`
`yet filed a reply.
`
`
`
`2
`
`
`
`On January 3, 2018 , Petitioner filed a request for Inter Partes Review of
`
`IPR2018-00354
`Patent 8,641,525
`
`
`
`
`claims 1, 9-10, 18-19, 21-24, 26 and 28-30 of U.S. Patent No. 9,289,688 (the “ʼ688
`
`Patent”). See IPR2018-00357, Paper 1. On July 9, 2018, the Board instituted Inter
`
`Partes Review in IPR2018-00357 on claims 1, 9-10, 18-19, 21-24, 26 and 28-30.
`
`See IPR2018-00357, Paper 7. Patent Owner has not yet filed a response. Petitioner
`
`has not yet filed a reply.
`
`On or around November 20, 2018 the Parties agreed to settle all of their
`
`disputes involving the ‘525 Patent, the ‘229 Patent, the ‘770 Patent and the ‘688
`
`Patent, including all litigation and Patent Office proceedings related thereto.
`
`On December 3, 2018, the Parties informed the Board of the settlement and
`
`requested authorization to file a joint motion to terminate the proceeding with
`
`respect to both the Patent Owner and the Petitioner. On December 4, 2018, the
`
`Board authorized the filing, on or before December 20, 2018, of the requested joint
`
`motion to terminate this proceeding as to both parties. The Board additionally
`
`authorized the parties to include with the joint motion to terminate a request to treat
`
`the Settlement Agreement as business confidential information.
`
`The ‘525 and ‘770 Patents are currently the subject of an appeal to the
`
`United States Court of Appeals for the Federal Circuit, Case No. 18-1432, from
`
`Inter Partes Review proceedings IPR2016-00948 and IPR2016-00949,
`
`respectively, filed by Valve Corporation. Dkt. 44. On July 30, 2018, Patent Owner
`
`
`
`3
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`filed its Appellant’s Opening Brief. On October 11, 2018, Valve Corporation filed
`
`its Cross-Appellant Opening Brief. Dkt. 53. On December 11, 2018, Patent
`
`Owner filed its Reply and Response Brief. Dkt. 57. Moreover, the ‘688 and ‘229
`
`Patents are currently the subject of pending Inter Partes Review proceedings
`
`IPR2017-00858 and IPR2017-01928, respectively, filed by Valve Corporation.
`
`Oral hearing concluded in both proceedings and a final written decision has not yet
`
`issued. These proceedings are unaffected by the Parties’ settlement agreement.
`
`
`
`II. Termination as to Patent Owner and Petitioner Is Appropriate
`
`Termination of the IPR is appropriate as the Board has not yet “decided the
`
`merits of the proceeding” on the proceedings noted above. See, e.g., Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012); 35 U.S.C.
`
`§ 317(a). Furthermore, Petitioner has not yet filed any replies.
`
`Notably, no dispute remains between the Parties involving the ʼ525, ʼ229,
`
`ʼ770 and ʼ688 Patents:
`
`i.
`
`the Parties have agreed to jointly request termination of the
`
`instituted Inter Partes Review, IPR2018-00354, IPR2018-00355,
`
`IPR2018-00356 and IPR2018-00357; and
`
`
`
`4
`
`
`
`the litigation between the Parties involving the related patents
`
`IPR2018-00354
`Patent 8,641,525
`
`
`(8,641,525, 9,352,229, 9,089,770 and 9,289,688) has been
`
`dismissed as part of the settlement.
`
`ii.
`
`
`
`
`
`
`
`Given the early stage of the proceeding and because the Board has not
`
`decided the merits of the proceeding, this motion should be granted in accordance
`
`with § 317 and this IPR should be terminated.
`
`
`
`III. Status of Related Litigation
`
`As noted above, the related district court action between the Parties has been
`
`settled and dismissed.
`
`
`
`IV. Treat Settlement Agreement as Business Confidential Information
`
`The Parties hereby request that the Settlement Agreement (including any
`
`related attachments) and its terms filed herewith as EX2023 be treated as business
`
`confidential information, be kept separate from the file of the IPR, and be made
`
`available only to Federal Government agencies on written request, or to any person
`
`on a showing of good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
`
`42.74(c). In view of that request the settlement agreement has been filed for access
`
`by the “Parties and Board Only.”
`
`
`
`
`
`5
`
`
`
`
`
`V. Conclusion
`
`IPR2018-00354
`Patent 8,641,525
`
`
`For the foregoing reasons, the Parties jointly request that the Board terminate
`
`the within Inter Partes Review proceeding, and treat the Settlement Agreement
`
`filed herewith as business confidential information and keep the agreement separate
`
`from the files of the above captioned IPR.
`
`Dated: December 11, 2018
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/Robert Becker
`
`
`Robert Becker, Reg. No. 37,778
`Ehab Samuel, Reg. No. 57,905
`MANATT, PHELPS & PHILLIPS, LLP
`
`Attorneys for Patent Owner
`IRONBURG INVENTIONS LTD.
`
`
`By: /s/Eric A. Buresh
`
`Paul R. Hart, Reg. No. 59,646
`Eric A. Buresh, Reg. No. 50,394
`ERISE IP
`5600 Greenwood Plaza Blvd.
`Suite 200
`Greenwood Village, CO 80111
`
`Attorneys for Petitioner
`COLLECTIVE MINDS GAMING, CO. LTD.
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
`
`IPR2018-00354
`Patent 8,641,525
`
`
`
`
`that on December 11, 2018, a complete and entire electronic copy of this JOINT
`
`MOTION TO TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. §
`
`317 AND 37 C.F.R. § 42.72 AND JOINT REQUEST TO KEEP PAPERS
`
`SEPARATE AS BUSINESS CONFIDENTIAL INFORMATION, and the
`
`accompanying Exhibit, were served in their entirety electronically via email to
`
`Petitioner’s counsel of record at the following address:
`
`
`
`
`Eric A. Buresh, No. 50,394, eric.buresh@eriseip.com
`Paul Hart, Reg. No. 59,646, paul.hart@eriseip.com
`
`Dated: December 11, 2018
`
`Respectfully submitted,
`
`By: /s/Robert Becker
`
`
`Robert Becker, Reg. No. 37,778
`Ehab Samuel, Reg. No. 57,905
`MANATT, PHELPS & PHILLIPS, LLP
`
`Attorneys for Patent Owner
`IRONBURG INVENTIONS LTD.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`321284406.2
`
`
`
`7
`
`
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