`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`UBER TECHNOLOGIES, INC. and
`CHOICE HOTELS INTERNATIONAL, INC.
`
`Petitioners
`
`v.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner
`__________________________
`
`CASE IPR2018-00535
`PATENT 9,454,748
`________________________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`PTAB Case. No IPR2018-00535
`Patent No. 9,454,748
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(a)-(b), Petitioners Uber
`
`Technologies, Inc. (“Uber”) and Choice Hotels International, Inc. (“Choice”) and
`
`Patent Owner Fall Line Patents, LLC (“Fall Line”) jointly move to terminate the
`
`present inter partes review proceeding in light of the parties’ resolution of their
`
`dispute relating to U.S. Patent No. 9,454,748 (“the ’748 Patent”) and the executed
`
`written agreement regarding the parties’ resolution.
`
`Termination with respect to Petitioners and Patent Owner is appropriate in the
`
`instant proceeding because the dispute between the parties has been resolved. The
`
`Board has not issued a decision regarding whether to institute inter partes review,
`
`and this proceeding is at a sufficiently early stage.
`
`As required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the parties are
`
`filing, concurrently herewith, a true copy of the executed settlement agreements
`
`between Fall Line and Uber (Exhibit 2001) and Fall Line and Choice (Exhibit 2002).
`
`There are no other agreements, oral or written, between the Parties made in
`
`connection with, or in contemplation of, the termination of this proceeding. By
`
`separate paper (Paper 11), the parties request, pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c), that the agreements be treated as confidential business
`
`information and kept separate from the public files of the involved patent.
`
`The related proceedings in the District Court for the Eastern District of Texas,
`
`Fall Line Patents, LLC v. Choice Hotels Int’l, Inc. (6:17-cv-00407) and Fall Line
`
`
`
`2
`
`
`
`PTAB Case. No IPR2018-00535
`Patent No. 9,454,748
`
`Patents, LLC v. Uber Technologies, Inc. (6:17-cv-00408) (both consolidated with
`
`6:17-cv-00202) have been dismissed. There are no other pending district court
`
`actions in which the ‘748 Patent is asserted. Regarding proceedings before the Patent
`
`Office, IPR2018-00043, filed by Unified Patents, Inc. against the ‘748 Patent, has
`
`been instituted and is currently pending.
`
`The applicable statute, provides that an inter partes review proceeding “shall
`
`be terminated with respect to any petitioner upon the joint request of the petitioner
`
`and the patent owner, unless the Office has decided the merits of the proceeding
`
`before the request for termination is filed.” 35 U.S.C. § 317(a). Moreover, strong
`
`public policy considerations favor settlement between parties to an inter partes
`
`review proceeding. Indeed, the Office Patent Trial Practice Guide provides:
`
`N. Settlement. There are strong public policy
`reasons to favor settlement between the parties to a
`proceeding. The Board will be available to facilitate
`settlement discussions, and where appropriate, may
`require a settlement discussion as part of the proceeding.
`The Board expects that a proceeding will terminate after
`the filing of a settlement agreement, unless the Board has
`already decided the merits of the proceeding.
`
`The Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14
`
`2012).
`
`Here, the Board has not decided the merits of the proceeding, and the deadline
`
`for the Board’s institution decision is August 7, 2018. No public interest factors
`
`
`
`3
`
`
`
`PTAB Case. No IPR2018-00535
`Patent No. 9,454,748
`
`militate against termination of this proceeding with respect to both Petitioners and
`
`Patent Owner in light of the circumstances of this proceeding.
`
`For the foregoing reasons, the parties jointly and respectfully request that the
`
`instant proceeding be terminated with respect to both Petitioners and Patent Owner.
`
`Dated: July 13, 2018
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Jonathan I. Detrixhe
`
`Jonathan I. Detrixhe
`Registration No. 68,556
`jdetrixhe@reedsmith.com
`John P. Bovich (pro hac vice)
`Reed Smith LLP
`101 Second Street #1800
`San Francisco, CA 94105
`
`Gerard M. Donovan (Reg. #67,771)
`gdonovan@reedsmith.com
`Reed Smith, LLP
`1301 K Street, NW
`Suite 1000 – East Tower
`Washington, DC 20005
`
`Counsel for Petitioners
`
`
`
`
`
`
`
`/s/ Matthew J. Antonelli
`
`Terry L. Watt (Reg. No. 42214)
`terry.watt@crowedunlevy.com
`Crowe & Dunlevy
`321 South Boston, Suite 500
`The Kennedy Bldg.
`Tulsa, OK 74103
`Telephone: 918/592 9800
`Fax: 918/592-9801
`
`Matthew J. Antonelli (Reg. No. 45973)
`matt@ahtlawfirm.com
`Michael E. Ellis (Reg. No. 72628)
`michael@ahtlawfirm.com
`Larry D. Thompson, Jr. (Reg. No.
`43952)
`larry@ahtlawfirm.com
`ANTONELLI, HARRINGTON &
`THOMPSON LLP
`4306 Yoakum Blvd., Suite 450
`Houston, TX 77006
`Telephone:713/581-3000
`
`Counsel for Patent Owner Fall Line
`Patents, LLC
`
`4
`
`
`
`PTAB Case. No IPR2018-00535
`Patent No. 9,454,748
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned document has
`
`been served in its entirety this 13th Day of July, 2018, on all counsel of record via
`
`email.
`
` /s/ Michael D. Ellis
`Reg. No. 72,628
`4306 Yoakum Blvd., Ste. 450
`Antonelli, Harrington & Thompson LLP
`Houston, TX 77006
`
`Counsel for Patent Owner Fall Line
`Patents, LLC
`
`5
`
`
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
