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`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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`Patent No. 9,219,780
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`________________________
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`Inter Partes Review No. IPR2020-01270
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`________________________
`JOINT MOTION TO TERMINATE PROCEEDING
`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 HP, Inc. and
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`Patent Owner Synkloud Technologies LLC jointly request to terminate Inter Partes
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`Review of U.S. Patent No. 9,219,780, Case No. IPR2020-01270. Microsoft has
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`already withdrawn from the proceeding, leaving HP, Inc. as the sole remaining
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`petitioner. HP, Inc. and Synkloud are also jointly requesting termination of the
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`following related proceedings, each of which are pending following institution:
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`IPR2020-01031, IPR2020-01032, IPR2020-01271, and IPR2020-01269.
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`I.
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`Background
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`On November 16, 2021, HP, Inc. and SynKloud entered into a settlement
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`agreement with regard to the patents at issue in these proceedings. HP, Inc. and
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`SynKloud now desire the IPR to be terminated. On November 16, 2021, the parties
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`jointly requested authorization to file a motion to terminate and to file a request to
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`treat the settlement agreement as confidential information. On the following day,
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`November 17, 2021, the Board granted authority to file a Joint Motion to Terminate
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`and Joint Request that the Settlement Agreement be Treated as Business
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`Confidential Information pursuant to 37 C.F.R. § 42.74.
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`II. Termination is Appropriate
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`Termination is appropriate because Petitioner HP, Inc. (the sole remaining
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`petitioner) desires to abandon this contest, and Patent Owner does not oppose
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`termination of the proceeding. 35 U.S.C. § 317(a) (“An inter partes review instituted
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`under this chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and the patent owner”). The parties have also filed a true
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`copy of 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 this proceeding encourages settlement consistent with
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`judicial economy and preference.
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`The settlement agreement between HP, Inc. and Synkloud is in writing and a true
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`and correct copy of the agreement as Exhibit 2043, 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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`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 in Case No. IPR2020-01270.
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`Dated: November 22, 2021
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`Respectfully Submitted,
`/s/ 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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`Yeasun Yoon
`Reg. No: 73,663
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Attorneys for Patent Owner
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`CERTIFICATE OF SERVICE
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`Under 37 C.F.R. §§ 42.6(e), this is to certify that I caused an electronic
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`copy of the foregoing and its exhibits to be served on the Petitioners’ lead and
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`backup counsel listed below by filing in the Patent Review Processing System
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`and by email to the following email addresses:
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`Lead Counsel
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`Joseph A. Micallef
`Reg. No. 39,772
`iprnotices@sidley.com
`jmicallef@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8492
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`Backup Counsel
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`Scott M. Border
`Reg. No. 77,744
`sborder@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8818
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`Date: November 22, 2021
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`By: _/Gregory Gonsalves_____
`Dr. Gregory Gonsalves
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