`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION and HP INC.,
`Petitioners,
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`v.
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`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
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`________________________
`Inter Partes Review No. IPR2020-01270
`U.S. Patent No. 9,219,780
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`WITH RESPECT TO PETITIONER MICROSOFT
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`________________________
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Microsoft
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`Corporation and Patent Owner Synkloud Technologies LLC jointly request to
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`terminate Microsoft’s participation in the Inter Partes Review of U.S. Patent No.
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`9,219,780 (“the ’780 Patent”), Case No. IPR2020-01270. For the avoidance of
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`doubt, only Microsoft is requesting to be terminated from this proceeding pursuant
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`to this joint motion—Petitioner HP still remains a party to the proceeding.
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`Microsoft and Synkloud are also jointly requesting termination of Microsoft from
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`the following related proceedings, each of which are pending following institution:
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`IPR2020-01031, IPR2020-01032, IPR2020-01269, IPR2020-01271.
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`I.
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`Background
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`On November 2, 2021, the parties entered into a settlement agreement with
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`regard to the patents at issue in these proceedings. Microsoft and SynKloud now
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`desire that Microsoft withdraw from this review and request its termination as to
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`Microsoft. On November 5, 2021, the parties jointly requested authorization to file
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`a motion to terminate and to file a request to treat the settlement agreement as
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`confidential information. On the November 8, 2021, the Board granted authority to
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`file a Joint Motion to Terminate and Joint Request that the Settlement Agreement be
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`Treated as Business Confidential Information pursuant to 37 C.F.R. § 42.74.
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`1
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`II. Termination of Microsoft is Appropriate
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`Termination is appropriate because Petitioner Microsoft desires to abandon
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`this contest, and Patent Owner does not oppose termination of the proceeding with
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`respect to Microsoft. 35 U.S.C. § 317(a) (“An inter partes review instituted under
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`this chapter shall be terminated with respect to any petitioner upon the joint request
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`of the petitioner and the patent owner”). The parties have also filed a true copy of
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`the written settlement agreement made in connection with the request for
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`termination, in accordance with 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(c).
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`Finally, termination of Microsoft from this proceeding encourages settlement
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`consistent with judicial economy and preference.
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`The settlement agreement between Microsoft and Synkloud is in writing and a
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`true and correct copy of the agreement as Exhibit 1042, is filed concurrently with the
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`present motion as business confidential information under 35 U.S.C. § 317(b).
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`Pursuant to 37 C.F.R. § 42.74(c), a Joint Request that the Settlement Agreement be
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`Treated as Business Confidential Information is submitted herewith.
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`Congress and the federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
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`U.S. 346, 352 (1981) (“The purpose of [Federal Rule of Civil Procedure] 68 is to
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`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575,
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`1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”). The Federal Circuit
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`2
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`also places a particularly strong emphasis on settlement. See Flex-Foot, Inc. v. CRP,
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`Inc., 238 F.3d 1362, 1370 (Fed. Cir. 2001) (“Upholding the terms of settlement
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`agreements encourages patent owners to agree to settlements and promotes judicial
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`economy.”); Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir.
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`1986) (noting that the law favors settlement to reduce antagonism and hostility
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`between parties).
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`III. Conclusion
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`For the foregoing reasons, the parties jointly and respectfully request
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`termination of the proceeding with respect to Petitioner Microsoft in Case No.
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`IPR2020-01270.
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`Dated: November 11, 2021
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`Respectfully Submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`Attorney for Petitioners
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`By: /s/ Gregory J. Gonsalves
`Dr. Gregory Gonsalves
`Reg. No. 43,639
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
`Phone: 571-419-7252
`Email:gonsalves@capitoliplaw.com
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`3
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`Yeasun Yoon
`Reg. No: 73,663
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
`Attorneys for Patent Owner
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 11th day of
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`November, 2021, I caused to be served a true and correct copy of the foregoing and
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`any accompanying exhibits by electronic mail on the following counsel:
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`Dr. Gregory J. Gonsalves - gonsalves@capitoliplaw.com
`Yeasun Yoon - yoon@capitoliplaw.com
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`Dated: November 11, 2021
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`Respectfully submitted,
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`/Francis Quaynor/
`Francis Quaynor
`Paralegal
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`5
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