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Entered: March 22, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
`
`Case IPR2019-00524
`U.S. Patent No. 9,445,251
`
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`JOINT MOTION TO DISMISS THE PETITION
`PURSUANT TO 37 C.F.R. §§ 42.71 AND 42.74
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`IPR2019-00524 (USP 9,445,251)
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`Joint Motion to Dismiss the Petition
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Apple Inc.
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`(“Petitioner”) and Patent Owner AGIS Software Development, LLC (“Patent
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`Owner”) (collectively, “the Parties”) jointly request termination of the inter
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`partes review of U.S. Patent No. 9,445,251 (“’251 patent”), Case No. IPR2019-
`
`00524.
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`Pursuant to 37 C.F.R. §§ 42.5 and 42.71, 42.72, the Board may terminate a
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`trial without rendering a final written decision, where appropriate, including
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`pursuant to a joint request under 35 U.S.C. §§ 317(a) or 327(a). See Winplus N.
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`Am., Inc. v. Pilot, Inc., IPR2018-00488, Paper 12 (P.T.A.B. Oct. 24, 2018).
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`This proceeding is still in its preliminary stages. A Petition for inter partes
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`review was filed on January 3, 2019 (Paper No. 1), and the Board has not yet
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`issued a decision on institution. The Parties have settled their dispute and
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`respectfully submit that dismissal of the Petition is proper here.
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`The ’251 patent was the subject of a District Court action in the Eastern
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`District of Texas, captioned AGIS Software Development LLC v. Apple, Inc.,
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`Civil Action No. TXED-2-17-cv-00516, which action has been dismissed (Dkt.
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`#87, Mar. 14, 2019). Dismissal of the Petition here would promote efficiency
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`and minimize unnecessary costs.
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`The ’251 patent is also the subject of district court cases (1) AGIS
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`Software Development LLC v. Huawei Device USA Inc., 2:17-cv-00513 (E.D.
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`1
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`IPR2019-00524 (USP 9,445,251)
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`Joint Motion to Dismiss the Petition
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`Tex.) (dismissed); (2) AGIS Software Development LLC v. HTC Corporation,
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`2:17-cv-00514 (E.D. Tex.) (stayed); (3) AGIS Software Development LLC v. LG
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`Electronics, Inc., 2:17-cv-00515 (E.D. Tex.) (stayed); (4) AGIS Software
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`Development LLC v. ZTE Corporation, et al., 2:17-cv-00517 (E.D. Tex.)
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`(dismissed); (5) AGIS Software Development LLC v. Apple Inc., 2:17-cv-00516
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`(E.D. Tex.) (dismissed); and (6) ZTE (USA) Inc. v. AGIS Software Development
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`LLC et al., 4:18-cv-06185 (N.D. Cal.) (pending). The ’251 patent is also the
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`subject of IPR2018-00817 entitled Apple Inc. v. AGIS Software Development
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`LLC (institution denied); IPR2018-01084 entitled Google LLC et al. v. AGIS
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`Software Development LLC (institution denied); IPR2018-01083 entitled Google
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`LLC v. AGIS Software Development LLC (institution denied); IPR2018-01082
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`entitled Google LLC v. AGIS Software Development LLC (institution denied);
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`IPR2018-01081 entitled Google LLC v. AGIS Software Development LLC
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`(institution denied); and IPR2019-00523 entitled Apple Inc. v. AGIS Software
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`Development LLC (pending).
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`The Parties executed a binding Confidential Settlement Agreement to
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`terminate this proceeding effective March 11, 2019. The Settlement Agreement
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`is submitted concurrently herewith. In accordance with 35 U.S.C. § 317 and 37
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`C.F.R. § 42.74(b), also submitted concurrently herewith is a joint request that the
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`Confidential Settlement Agreement be
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`treated as business confidential
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`2
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`IPR2019-00524 (USP 9,445,251)
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`Joint Motion to Dismiss the Petition
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`information, be kept separate from the file of the involved patent, and be made
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`available only to the Federal Government agencies on written request, or to any
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`person on showing of good cause under 35 U.S.C. § 317 and 37 C.F.R. §
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`42.74(c). A true and correct copy of the Settlement Agreement is submitted with
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`that Request as Confidential Exhibit 1031.
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`Petitioner and Patent Owner certify that there are no other agreements, oral
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`or written, between the parties made in connection with, or in contemplation of,
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`the termination of the proceeding. Both Petitioner and Patent Owner support
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`termination of the proceeding.
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`CONCLUSION
`For the foregoing reasons, Petitioner and Patent Owner jointly request that
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`Respectfully submitted,
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`the Board dismiss this proceeding in its entirety.
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`Dated: March 22, 2019
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`
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`By: / Matthew J. Moore /
`
`Matthew J. Moore (Reg. No. 42,012)
`Jonathan M. Strang (Reg. No. 61,724)
`Robert Steinberg (Reg. No. 33,144)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`Tel.: 202.637.2200
`matthew.moore@lw.com
`jonathan.strang@lw.com
`bob.steinberg@lw.com
`
`Lisa K. Nguyen (Reg. No. 58,018)
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`3
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`

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`IPR2019-00524 (USP 9,445,251)
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`Joint Motion to Dismiss the Petition
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`Latham & Watkins LLP
`140 Scott Drive
`Menlo Park, CA 94025
`Tel.: 650.470.4848
`lisa.nguyen@lw.com
`
`Counsel for Petitioner
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`By: / Vincent J. Rubino, III /
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Alfred R. Fabricant (pro hac vice to be filed)
`Peter Lambrianakos (Reg. No. 58,279)
`Enrique W. Iturralde (Reg. No. 72,883)
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`212.209.4800
`vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`plambrianakos@brownrudnick.com
`eiturralde@brownrudnick.com
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`Counsel for Patent Owner
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`IPR2019-00524 (USP 9,445,251)
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`Joint Motion to Dismiss the Petition
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`
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 22nd day of March,
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`2019, a copy of Joint Motion to Dismiss the Petition Pursuant to 37 C.F.R. §§
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`counsel at the following email addresses:
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`42.71 and 42.74 was served by electronic mail on Patent Owner’s lead and backup
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`
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`Vincent J. Rubino, III (Reg. No. 68,594)
`Alfred R. Fabricant (pro hac vice to be filed)
`Peter Lambrianakos (Reg. No. 58,279)
`Enrique W. Iturralde (Reg. No. 72,883)
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`212.209.4800
`vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`plambrianakos@brownrudnick.com
`eiturralde@brownrudnick.com
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`By: / Matthew J. Moore /
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`Matthew J. Moore (Reg. No. 42,012)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`202.637.2200
`matthew.moore@lw.com
`
`Counsel for Petitioner
`Apple Inc.
`
`

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