`
`Doug G. Muehlhauser (Reg. No. 42,018)
`William H. Shreve (Reg. No. 35,678)
`Payson LeMeilleur (pro hac vice)
`Mark Lezama (pro hac vice)
`Kendall M. Loebbaka (pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.:
`(949) 760-0404
`Fax:
`(949) 760-9502
`E-mail: BoxNomadix@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2019-00211
`Patent 7,953,857
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`
`
`Pursuant to 37 C.F.R. § 42.72, Petitioner and Patent Owner jointly move to
`
`terminate the present proceeding, Case IPR2019-00211. The Board authorized this
`
`joint motion on May 4, 2020.
`
`Petitioner filed a petition for inter partes review of U.S. Patent No. 7,953,857
`
`on November 12, 2018. On January 23, 2020, in Nomadix, Inc. v. Guest-Tek
`
`Interactive Entertainment Ltd., Case No. CV19-04980 AB (FFMx), the United
`
`States District Court for the Central District of California (“the District Court”)
`
`granted a motion by Patent Owner for summary judgment, holding that, by initiating
`
`the present inter partes review proceeding, Petitioner violated the forum-selection
`
`clause in a patent license agreement that the parties entered into in December, 2010.
`
`(Ex. 2009.) On April 22, 2020, the District Court entered final judgment in Patent
`
`Owner’s favor, ordering Petitioner to join Patent Owner in moving to terminate the
`
`present proceeding and enjoining Petitioner from otherwise participating further in
`
`the present proceeding. (Ex. 2010.) In particular, the District Court ordered
`
`Petitioner to join Patent Owner in filing the present motion to terminate. (Id.) The
`
`Board has not entered a final written decision in the inter partes review. Termination
`
`of this proceeding in its entirety as to all parties is consistent with the District Court’s
`
`judgment.
`
`-1-
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`Dated: May 5, 2020
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`/Douglas G. Muehlhauser/
`Douglas G. Muehlhauser (Reg. No. 42,018)
`William H. Shreve (Reg. No. 35,678)
`Payson LeMeilleur (pro hac vice)
`Mark Lezama (pro hac vice)
`Kendall M. Loebbaka (pro hac vice)
`
`Attorneys for Patent Owner
`NOMADIX, INC.
`
`Customer No. 20995
`(949) 760-0404
`
`
`With the permission of:
`
`Jeffrey W. Lesovitz (Reg. No. 63,461)
`Steven J. Rocci (Reg. No. 30,489)
`Daniel J. Goettle (Reg. No. 50,983)
`BAKER & HOSTETLER LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
`
`Attorneys for Petitioner
`GUEST TEK INTERACTIVE
`ENTERTAINMENT LTD.
`
`-2-
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
`
`of counsel for Petitioner, a true and correct copy of JOINT MOTION TO
`
`TERMINATE PROCEEDING is being served electronically on May 5, 2020, to the
`
`e-mail addresses shown below:
`
`Jeffrey W. Lesovitz
`Baker & Hostetler LLP
`jlesovitz@bakerlaw.com
`
`Steven J. Rocci
`Baker & Hostetler LLP
`srocci@bakerlaw.com
`
`Daniel J. Goettle
`Baker & Hostetler LLP
`dgoettle@bakerlaw.com
`
`Guest-TekIPR@bakerlaw.com
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`Dated: May 5, 2020
`
`32767328
`
`
`
`/Douglas G. Muehlhauser/
`Douglas G. Muehlhauser (Reg. No. 42,018)
`William H. Shreve (Reg. No. 35,678)
`Payson LeMeilleur (pro hac vice)
`Mark Lezama (pro hac vice)
`Kendall M. Loebbaka (pro hac vice)
`
`Attorneys for Patent Owner
`NOMADIX, INC.
`
`-3-
`
`
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