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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
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`STARBUCKS CORPORATION ET AL.
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`Petitioners
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`v.
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`FALL LINE PATENTS, LLC
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`Patent Owner
`__________________________
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`CASE IPR2019-00610
`PATENT 9,454,748
`________________________
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`JOINT MOTION TO TERMINATE WITH RESPECT TO STARBUCKS
`CORPORATION PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74.
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`IPR2019-00610
`Patent No. 9,454,748
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Starbucks
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`Corporation (“Starbucks”) and Patent Owner Fall Line Patents, LLC (“Fall Line”)
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`jointly move to terminate the present inter partes review proceeding with respect to
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`Starbucks, in light of the parties’ resolution of their dispute relating to U.S. Patent
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`No. 9,454,748 (“the ’748 Patent”) and the executed written agreement regarding the
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`parties’ resolution. The remaining petitioners, American Multi-Cinema, Inc. and
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`AMC Entertainment Holdings, Inc. (“AMC”), Boston Market Corporation (“Boston
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`Market”), Mobo Systems, Inc., d/b/a OLO Online Ordering (“Olo”), McDonald’s
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`Corporation and McDonald’s USA (“McDonald’s”), Panda Restaurant Group, Inc.
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`and Panda Express Inc. (“Panda”), and Papa John’s International, Inc., Star Papa LP,
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`and Papa John’s USA, Inc. (“Papa John’s”), consent to and do not oppose
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`termination of Starbucks from this proceeding. This motion was authorized by e-
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`mail from the Board on June 26, 2019
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`Termination with respect to Starbucks is appropriate in the instant proceeding
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`because the dispute between Starbucks and Fall Line has been resolved. The Board
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`has not issued a decision regarding whether to institute inter partes review, and this
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`proceeding is at a sufficiently early stage.
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`As required by 35 U.S.C. § 317(b), the parties are filing, concurrently
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`herewith, a true copy of their executed written agreement as Exhibit 2005. There are
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`no other agreements, oral or written, between the Parties made in connection with,
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`2
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`IPR2019-00610
`Patent No. 9,454,748
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`or in contemplation of, the termination of this proceeding. By separate paper (Paper
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`12), the parties request, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c),
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`that the agreement be treated as confidential business information and kept separate
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`from the public files of the involved patent.
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`The related proceeding in the District Court for the Eastern District of Texas,
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`Fall Line Patents, LLC v. Starbucks Corporation (6:18-cv-00411) has been
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`dismissed, and Starbucks has been terminated from the consolidated lead case Fall
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`Line Patents, LLC v. Zoe’s Kitchen, Inc. et al. (6:18-cv00407), which remains
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`pending. The following related district court action also remain pending: Fall Line
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`Patents, LLC v. AMC Entertainment Holdings, Inc. et al. (6:18-cv-00408), Fall Line
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`Patents, LLC v. Boston Market Corporation (6:18-cv-409), Fall Line Patents, LLC
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`v. McDonald’s Corporation, et al. (6:18-cv-00412), Fall Line Patents, LLC v. Panda
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`Restaurant Group, Inc. et al. (6:18-cv-00413), Fall Line Patents, LLC v. Papa
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`John’s International, Inc. (6:18-cv-00415). Regarding proceedings before the
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`Patent Office, IPR2018-00043, filed by Unified Patents, Inc. against the ’748 patent,
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`has been instituted and a final written decision issued on April 4, 2019.
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`The applicable statute provides that an inter partes review proceeding “shall
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`be terminated with respect to any petitioner upon the joint request of the petitioner
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`and the patent owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.” 35 U.S.C. § 317(a). (emphasis added).
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`3
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`IPR2019-00610
`Patent No. 9,454,748
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`Moreover, strong public policy considerations favor settlement between parties to
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`an inter partes review proceeding. Indeed, the Office Patent Trial Practice Guide
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`provides:
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`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.
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`The Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14
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`2012).
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`Here, the Board has not decided the merits of the proceeding, and the deadline
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`for the Board’s institution decision is August 10, 2019. No public interest factors
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`militate against termination of this proceeding with respect to Starbucks.1
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`For the foregoing reasons, Starbucks and Fall Line respectfully request that
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`the instant proceeding be terminated with respect to Starbucks.
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`Dated: June 26, 2019
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`Respectfully submitted,
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`/s/ Tara D. Elliott
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`1 This Motion requests termination of the IPR with respect to Starbucks only, and
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`/s/ Matthew J. Antonelli
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`does not request termination of the IPR as to the other petitioners.
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`4
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`Tara D. Elliott (Reg. No. 52,859)
`tara.elliott@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W.,
`Suite 1000
`Washington, D.C. 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
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`Lisa K. Nguyen (Reg. No. 58,018)
`lisa.nguyen@lw.com
`LATHAM & WATKINS LLP
`140 Scott Drive
`Menlo Park, CA 94025
`Telephone: (650) 328-4600
`Facsimile: (650) 463-2600
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`Counsel for Petitioner
`Starbucks Corporation
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`IPR2019-00610
`Patent No. 9,454,748
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`
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`Terry L. Watt (Reg. No. 42,214)
`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
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`Matthew J. Antonelli (Reg. No. 45,973)
`matt@ahtlawfirm.com
`Michael D. Ellis (Reg. No. 72,628)
`michael@ahtlawfirm.com
`Larry D. Thompson, Jr. (Reg. No. 43,952)
`larry@ahtlawfirm.com
`ANTONELLI, HARRINGTON &
`THOMPSON LLP
`4306 Yoakum Blvd., Suite 450
`Houston, TX 77006
`Telephone:713/581-3000
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`Counsel for Patent Owner
`Fall Line Patents, LLC
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`5
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`CERTIFICATE OF SERVICE
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`IPR2019-00610
`Patent No. 9,454,748
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on June 26, 2019,
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`the foregoing document was served via email on counsel for Petitioners:
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`Tara D. Elliott (tara.elliott@lw.com
`Lisa K. Nguyen (lisa.nguyen@lw.com)
`Lowell D. Mead (lmead@cooley.com)
`Robert H. Reckers (rreckers@shb.com)
`Ricardo Bonilla (rbonilla@fr.com; PTABInbound@fr.com)
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` /s/ Michael D. Ellis
`Reg. No. 72,628
`Counsel for Patent Owner Fall Line
`Patents, LLC
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`6
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