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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`Robert Bosch LLC
` Petitioner
`v.
`Monument Peak Ventures LLC
`Patent Owner
`____________
`
`Case IPR2019- 01473
`U. S. Patent No. 6,654,507
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`JOINT MOTION TO TERMINATE PROCEEDINGS
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`Case IPR2019-01473
`Patent No. 6,654,507
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Robert Bosch LLC and Patent Owner
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`Monument Peak Ventures LLC jointly request that this inter partes review
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`proceeding involving U.S. Patent No. 6,654,507 (“the ’507 patent”) be terminated
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`based on a settlement between Petitioner and Patent Owner (“the Parties”).
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`II. REASONS FOR GRANTING THE MOTION
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,768 (Aug. 14, 2012). The Board authorized filing of the instant motion
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`on August 25, 2020. Guidance as to the content of a motion to terminate is provided
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`in IPR2013-00428, Paper No. 56. There, the Board indicated that a joint motion,
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`such as this one, should (a) include a brief explanation as to why termination is
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`appropriate; (b) identify all parties in any related litigation involving the patent at
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`issue; (c) identify any related proceedings currently before the Office; and (d)
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`discuss specifically the current status of each such related litigation or proceeding
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`with respect to each party to the litigation or proceeding. Id. at 2. This motion
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`satisfies each of the above requirements and is accompanied by the Parties’
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`settlement agreement, as required by 35 U.S.C. § 317(b) and 35 C.F.R. § 42.74 (b).
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`a. Brief Explanation of Why Termination is Appropriate
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`Termination is appropriate because briefing by the Parties is not yet complete,
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`2
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`Case IPR2019-01473
`Patent No. 6,654,507
`oral argument has not been held, the Board has not decided the merits of the
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`proceeding, and a final written decision has not been issued. The Parties have
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`resolved their disputes and executed a settlement agreement to request termination
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`of this proceeding and dismissal of the Parties’ related proceeding regarding the ’507
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`patent in Monument Peak Ventures, LLC v. Bosch Security Systems, LLC et al.
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`Pursuant to the Parties’ settlement agreement, the Parties have jointly moved to
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`dismiss the litigation.
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`b. All Parties in Any Pending Related Litigation Involving the Patent at
`Issue
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`The following litigations are related to the ’507 patent:
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`Monument Peak Ventures, LLC v. Bosch Security Systems, LLC et al., Case
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`No. 1:20-cv-00611-MN (D. Del.) (joint motion to dismiss filed August 19,
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`2020)
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`c. Related Proceedings Currently Before the Office
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`This proceeding is related to the following proceedings, in each of which the
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`Parties have filed or are filing concurrent joint motions to terminate:
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`1. IPR2019-01472, involving U.S. Patent No. 6,282,317, instituted on
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`March 09, 2020;
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`2. IPR2019-01474, involving U.S. Patent No. 6,654,506, instituted on
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`March 09, 2020;
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`3. IPR2019-01475, involving U.S. Patent No. 7,035,461, instituted on
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`March 23, 2020; and
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`4. IPR2019-01476, involving U.S. Patent No. 7,148,908, instituted on
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`Case IPR2019-01473
`Patent No. 6,654,507
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`March 23, 2020.
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`d. Current Status of Each Such Related Litigation of Proceeding With
`Respect to Each Party in the Litigation or Proceeding
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`Sections II.b and II.c above indicate the status of each related litigation or
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`proceeding with respect to each party to the litigation or proceeding.
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`III. SETTLEMENT AGREEMENT
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
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`settlement agreement is in writing, and a true and correct copy is being filed
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`concurrently herewith as Exhibit 1012.1 There are no other agreements, oral or
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`written, between the parties made in connection with, or in contemplation of, the
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`termination of these proceedings. The parties are also filing concurrently herewith a
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`joint request under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat the
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`settlement agreement as business confidential information and keep it separate from
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`the files of the ’507 patent.
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`IV. CONCLUSION
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`For all these reasons, the Parties respectfully request termination of this
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`proceeding.
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`1 The settlement agreement is being filed via PTAB E2E with access to the “Parties
`and Board only.”
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`4
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`Case IPR2019-01473
`Patent No. 6,654,507
`Respectfully submitted,
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`/Tarek N. Fahmi/
` Tarek N. Fahmi
`Reg. No. 41,402
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`Ascenda Law Group, PC
`2150 N First Street, Suite 420
`San Jose, CA 95131
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`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
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`Counsel for Patent Owner
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`Dated: August 26, 2020
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`/Lionel M. Lavenue/
`
`Lionel M. Lavenue
`Reg. No. 46,859
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`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER, LLP
`Two Freedom Square
`1955 Freedom Drive
`Reston, VA 20190
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`Tel: 571-203-2750
`Email:
`lionel.lavenue@finnegan.com
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`Counsel for Petitioner
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`5
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing JOINT
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`MOTION TO TERMINATE PROCEEDINGS was served on August 26, 2020,
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`via email directed to counsel of record for the Patent Owner at the following:
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`Tarek N. Fahmi (Reg. No. 41,402)
`tarek.fahmi@ascendalaw.com
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`Jonathan Tsao (Reg. No. 61,241)
`jonathan.tsao@ascendalaw.com
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`patents@ascendalaw.com
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`Ascenda Law Group, PC
`2150 N First St., Suite 420
`San Jose, CA 95131
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` By:/Daniel E. Doku/
`Daniel E. Doku
`Litigation Clerk
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`Finnegan, Henderson, Farabow,
`Garret & Dunner, LLP
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`Dated: August 26, 2020
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