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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`SONY CORPORATION and POLYCOM, INC.
`Petitioners,
`
`v.
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`REALTIME ADAPTIVE STREAMING LLC
`Patent Owner.
`
`
`
`Case IPR2018-01299
`Case IPR2018-01413
`Case IPR2018-01439
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEWS
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`Patent 9,762,907
`Patent 9,769,477
`Patent 8,929,442
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`Patent Owner Realtime Adaptive Streaming LLC and Petitioners Sony
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`Corporation and Polycom, Inc. have reached a settlement. Pursuant to 35 U.S.C.
`
`§ 317(a) and 37 C.F.R. §§ 42.72 and 42.74, the parties jointly request termination
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`of the inter partes reviews of U.S. Patent Nos. 9,762,907; 9,769,477; and
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`8,929,442
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`(“Patents-in-Suit”), Cases
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`IPR2018-01299;
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`IPR2018-01413; and
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`IPR2018-01439. The parties were authorized to file this Joint Motion by the Board
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`(via email) on November 7, 2018.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy
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`of the two settlement agreements that resolve the disputes in the above-captioned
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`inter partes reviews relating to the Patents-in-Suit are filed herewith as exhibits.
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`There are no other collateral agreements between the parties made in connection
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`with, or in contemplation of, the termination sought.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Realtime and
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`Sony, and Realtime and Polycom are concurrently filing Joint Requests to Keep
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`Separate, which ask the Board to treat the settlement agreements as business
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`confidential information, and to keep them separate from the files of these
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`proceedings and the files of the Patents-in-Suit.
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`I.
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`Statement of Precise Relief Requested
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`The parties jointly request that the Board terminate the inter partes reviews
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`of the Patents-in-Suit, Cases IPR2018-01299; IPR2018-01413; and IPR2018-
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`
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`2
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`
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`01439, in their entirety.
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`II. Reasons Why Termination Is Appropriate
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`Termination of these proceedings with respect to all parties is proper. These
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`inter partes reviews are in their early stages. The Petitions were filed on June 28,
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`2018, July 31, 2018, and August 2, 2018, and the Board has not yet instituted
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`review on the Petitions.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Because all parties request
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`termination, and the Board has not yet decided the merits of the proceedings, the
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`Board should terminate the proceedings with respect to Sony and Polycom.
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`When there are no petitioners remaining in an inter partes review, the Board
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`may terminate the proceeding entirely. 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
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`Sony and Polycom are the only petitioners in these inter partes reviews. All parties
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`support termination of these proceedings. With no petitioners remaining in the
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`proceedings and no institution decision or final written decision on the merits,
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`termination of these proceedings entirely is appropriate.
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`The lawsuit between Realtime and Polycom involving the Patents-in-Suit
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`was dismissed on October 15, 2018. The lawsuit between Realtime and Sony
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`3
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`involving the Patents-in-Suit was dismissed on November 5, 2018. The parties do
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`not contemplate any litigation or proceeding involving the Patents-in-Suit in the
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`foreseeable future.
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`III. No Future Participation by Petitioners Sony and Polycom
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`Sony and Polycom will not be participating further in these proceedings.
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`IV. Conclusion
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`The parties have settled all disputes relating to the Patents-in-Suit. These
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`inter partes reviews are in their early stages, and the Board has not entered an
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`institution decision or a final written decision on the merits in these proceedings.
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`Accordingly, the parties respectfully request the Board to terminate these
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`proceedings in their entirety.
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`Date: November 7, 2018
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`4
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`Respectfully submitted,
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` /Kent N. Shum/
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`
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`
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`Kent N. Shum (Reg. No. 61,117)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`kshum@raklaw.com
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`Counsel for Patent Owner Realtime
`Adaptive Streaming LLC
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` /Eric A. Buresh/
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`
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`Eric A. Buresh (Reg. No. 50,394)
`Erise IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`Phone: (913) 777-5600
`Eric.buresh@eriseip.com
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`Counsel for Petitioners Sony
`Corporation and Polycom, Inc.
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`
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`5
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`November 7, 2018, by filing this document through the Patent Trial and Appeal
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`Board End to End system as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioners:
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`Eric A. Buresh, eric.buresh@eriseip.com
`Abran J. Kean, abran.kean@eriseip.com
`Jennifer C. Bailey, jennifer.bailey@eriseip.com
`Chris R. Schmidt, chris.schmodt@eriseip.com
`ptab@eriseip.com
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`Date: November 7, 2018
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` /Kent N. Shum/
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`
`
`
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`Kent N. Shum (Reg. No. 61,117)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`
`Counsel for Patent Owner Realtime
`Adaptive Streaming LLC
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`
`
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`6
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`
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