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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK CORPORATION, DISH NETWORK L.L.C., AND DISH
`NETWORK SERVICE L.L.C.
`Petitioner
`v.
`WISTARIA TRADING LTD.,
`Patent Owner
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`Case IPR2019-01358
`U.S. Patent No. 7,475,246
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`PETITIONER’S JOINT MOTION TO TERMINATE PETITION
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`1
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, DISH Network
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`Corporation, DISH Network L.L.C., and DISH Network Service L.L.C.
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`(“Petitioners”) and Patent Owner Wistaria Trading Ltd. (“Patent Owner”) jointly
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`request termination of this inter partes review (“IPR”) of 7,475,246 (the “’246
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`patent”), Case No. IPR2019-01358, and termination of the proceeding with respect
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`to Petitioner. The parties note that the Decision on Institution is pending.
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`The parties have settled and have reached agreement to terminate this IPR. In
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`accordance with 37 C.F.R. § 42.20(b), the parties received authorization from the
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`Board to file this motion on January 22, 2020.
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`Termination of this proceeding is proper for at least the following reasons:
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` The parties are jointly requesting termination. 77 Fed. Reg. 48756,
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`48768 (Aug. 14, 2012) (“There are strong public policy reasons to
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`favor settlement between the parties to a proceeding.”) (emphasis
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`added). Both Congress and the federal courts have expressed a strong
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`interest in encouraging settlement in litigation. See, e.g., Delta Air
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`Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed.
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`R. Civ. P.] 68 is to encourage the settlement of litigation.”); Bergh v.
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`Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law
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`favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
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`Federal Circuit places a particularly strong emphasis on settlement. See
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`Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir.
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`2
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`1986) (noting that the law favors settlement to reduce antagonism and
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`hostility between parties). Here, no public interest or other factors
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`weigh against termination of this proceeding.
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` The Board has not yet “decided the merits of the proceeding before the
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`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis
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`added); 77 Fed. Reg. 48768 (“The Board expects that a proceeding will
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`terminate after the filing of a settlement agreement unless the Board
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`has already decided the merits of the proceeding.”) Indeed, the Board
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`has not yet made a decision on institution of this inter partes review.
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`Petitioners filed their petition for inter partes review on August 1,
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`2019. No Motions are outstanding in this proceeding. No other party’s
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`rights will be prejudiced by the termination of this inter partes review.
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`This supports the propriety of terminating this proceeding even though
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`the settlement and termination provisions of 35 U.S.C. § 317, on their
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`face, apply only to “instituted” proceedings. 77 Fed. Reg. 48680,
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`48686 (Aug. 14, 2012) (And 35 U.S.C. 317(a) provides “[a]n inter
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`partes review instituted under this chapter shall be terminated with
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`respect to any petitioner upon the joint request of the petitioner and the
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`patent owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.”).
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`3
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` In Blue Spike LLC et al. v. DISH Network Corporation et al., United
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`States District Court for the District of Delaware, Case No. 1:19-CV-
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`00160-LPS-CJB the parties are moving to dismiss the case. The
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`settlement also calls for Blue Spike LLC and Dish Network
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`Corporation et al. to jointly request termination of the proceeding
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`before the Board involving the ’246 patent (i.e., IPR2019-01358).
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`The following proceedings are related to the ’246 Patent:
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`Blue Spike LLC et al v. Charter Communications, Inc., 1-19-cv-00158 (D.
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`Del. filed Jan. 28, 2018) and Blue Spike LLC et al v. Comcast Cable
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`Communications, LLC, 1-19-cv-00159 (D. Del. filed Jan. 28, 2018).
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`Before the Patent Trial and Appeal Board, DISH Network Corporation,
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`DISH Network L.L.C. and DISH Network Service L.L.C. v Wistaria Trading Ltd.,
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`IPR2019-01357 filed July 19, 2019.
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`The settlement agreement between the parties has been made in writing, and
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`a true and correct copy will be filed with this request as Exhibit 1030.
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`Aside from the settlement agreement, the parties confirm that there are no
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`other “collateral agreements referred to in such agreement or understanding, made
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`in connection with, or in contemplation of, the termination of [the] inter partes
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`review.” 35 U.S.C. § 317(b).
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`4
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`January 22, 2020
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` /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
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`Ali Dhanani (Reg. No. 66,233)
`BAKER BOTTS L.L.P.
`910 Louisiana St.
`Houston, TX 77002
`713.229.1108
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`Attorneys for Petitioner, DISH Network
`Corporation, DISH Network L.L.C., and
`DISH Network Service L.L.C.
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` /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
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`Attorneys for Patent Owner, Wistaria
`Trading Ltd.
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`5
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the Joint Motion to Terminate
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`Pursuant to 35 U.S.C. § 317 was served on January 22, 2020, by e-mail directed to
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`counsel of record for the Patent Owner as follows:
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`January 22, 2020
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` /Eliot D. Williams/
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`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
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`Attorney for Petitioner, DISH Network
`Corporation, DISH Network L.L.C., and
`DISH Network Service L.L.C.
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`