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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`────────────────────────
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`────────────────────────
`DISH NETWORK CORPORATION, DISH NETWORK L.L.C., AND DISH
`NETWORK SERVICE L.L.C.
`Petitioner
`v.
`WISTARIA TRADING LTD.,
`Patent Owner
`
`────────────────────────
`
`Case IPR2019-01305
`U.S. Patent No. 9,934,408
`
`────────────────────────
`
`PETITIONER’S JOINT MOTION TO TERMINATE PETITION
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`1
`
`

`

`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, DISH Network
`
`Corporation, DISH Network L.L.C., and DISH Network Service L.L.C.
`
`(“Petitioners”) and Patent Owner Wistaria Trading Ltd. (“Patent Owner”) jointly
`
`request termination of this inter partes review (“IPR”) of 9,934,408 (the “’408
`
`patent”), Case No. IPR2019-01305, and termination of the proceeding with respect
`
`to Petitioner. The parties note that the Decision on Institution is pending.
`
`The parties have settled and have reached agreement to terminate this IPR. In
`
`accordance with 37 C.F.R. § 42.20(b), the parties received authorization from the
`
`Board to file this motion on January 22, 2020.
`
`Termination of this proceeding is proper for at least the following reasons:
`
` The parties are jointly requesting termination. 77 Fed. Reg. 48756,
`
`48768 (Aug. 14, 2012) (“There are strong public policy reasons to
`
`favor settlement between the parties to a proceeding.”) (emphasis
`
`added). Both Congress and the federal courts have expressed a strong
`
`interest in encouraging settlement in litigation. See, e.g., Delta Air
`
`Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed.
`
`R. Civ. P.] 68 is to encourage the settlement of litigation.”); Bergh v.
`
`Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law
`
`favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
`
`Federal Circuit places a particularly strong emphasis on settlement. See
`
`Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir.
`
`2
`
`

`

`1986) (noting that the law favors settlement to reduce antagonism and
`
`hostility between parties). Here, no public interest or other factors
`
`weigh against termination of this proceeding.
`
` The Board has not yet “decided the merits of the proceeding before the
`
`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis
`
`added); 77 Fed. Reg. 48768 (“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.”) Indeed, the Board
`
`has not yet made a decision on institution of this inter partes review.
`
`Petitioners filed their petition for inter partes review on August 1,
`
`2019. No Motions are outstanding in this proceeding. No other party’s
`
`rights will be prejudiced by the termination of this inter partes review.
`
`This supports the propriety of terminating this proceeding even though
`
`the settlement and termination provisions of 35 U.S.C. § 317, on their
`
`face, apply only to “instituted” proceedings. 77 Fed. Reg. 48680,
`
`48686 (Aug. 14, 2012) (And 35 U.S.C. 317(a) provides “[a]n inter
`
`partes review instituted under this chapter 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.”).
`
`3
`
`

`

` In Blue Spike LLC et al. v. DISH Network Corporation et al., United
`
`States District Court for the District of Delaware, Case No. 1:19-CV-
`
`00160-LPS-CJB the parties are moving to dismiss the case. The
`
`settlement also calls for Blue Spike LLC and Dish Network
`
`Corporation et al. to jointly request termination of the proceeding
`
`before the Board involving the ’408 patent (i.e., IPR2019-01305).
`
`The following proceedings are related to the ’408 Patent:
`
`Blue Spike LLC et al v. Charter Communications, Inc., 1-19-cv-00158 (D.
`
`Del. filed Jan. 28, 2018) and Blue Spike LLC et al v. Comcast Cable
`
`Communications, LLC, 1-19-cv-00159 (D. Del. filed Jan. 28, 2018).
`
`The settlement agreement between the parties has been made in writing, and
`
`a true and correct copy will be filed with this request as Exhibit 1029.
`
`Aside from the settlement agreement, the parties confirm that there are no
`
`other “collateral agreements referred to in such agreement or understanding, made
`
`in connection with, or in contemplation of, the termination of [the] inter partes
`
`review.” 35 U.S.C. § 317(b).
`
`4
`
`

`

`January 22, 2020
`
`
`
` /Eliot D. Williams/
`
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`BAKER BOTTS L.L.P.
`1001 Page Mill Road, Bldg. 1, Suite 200
`Palo Alto, California 94304
`650.739.7511
`
`Ali Dhanani (Reg. No. 66,233)
`BAKER BOTTS L.L.P.
`910 Louisiana St.
`Houston, TX 77002
`713.229.1108
`
`Attorneys for Petitioner, DISH Network
`Corporation, DISH Network L.L.C., and
`DISH Network Service L.L.C.
`
` /Christopher M. Scurry/
`Christopher M. Scurry (Reg. No. 66,870)
`MCDONNELL, BOEHNEN,
`HULBERT, & BERGHOFF, L.L.P.
`300 South Wacker Drive
`Chicago, Illinois 60606
`312.913.0001
`
`Attorneys for Patent Owner, Wistaria
`Trading Ltd.
`
`5
`
`

`

`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the Joint Motion to Terminate
`
`Pursuant to 35 U.S.C. § 317 was served on January 22, 2020, by e-mail directed to
`
`counsel of record for the Patent Owner as follows:
`
`January 22, 2020
`
`
`
` /Eliot D. Williams/
`
`Eliot D. Williams (Reg. No. 50,822)
`BAKER BOTTS L.L.P.
`1001 Page Mill Road, Bldg. 1, Suite 200
`Palo Alto, California 94304
`650.739.7511
`
`Attorney for Petitioner, DISH Network
`Corporation, DISH Network L.L.C., and
`DISH Network Service L.L.C.
`
`

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