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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________
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`ADOBE INC.,
`Petitioner
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`v.
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` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
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`Case IPR2020-01301
`U.S. Patent 9,219,780
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`______________
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`JOINT MOTION TO TERMINATE
` PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
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`Pursuant to 35 U.S.C. §317 and 37 C.F.R. § 42.72, and the Board’s
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`authorization of June 22, 2021, Patent Owner SynKloud Technologies, LLC
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`(“Patent Owner”) and Petitioner Adobe Inc. (“Petitioner”) (collectively, “the
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`Parties”) have settled their dispute and jointly request termination of Inter Partes
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`Review No. IPR2020-01301, regarding U.S. Patent No. 9,219,780.
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`I. RELATED PROCEEDINGS
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`Petitioner also filed IPR2020-01235 against Patent Owner’s Patent No.
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`10,015,254 and IPRs2020-01392 and 01393 against Patent No. 9,239,686. The
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`parties have also agreed to settle IPRs2020-01235, 01392, and 01393 and will file
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`a motion to terminate in each of those IPRs also.
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`The Parties have agreed to settle and jointly moved to dismiss with prejudice
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`their related district court litigation concerning the patents mentioned above.
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`II. BRIEF EXPLANATION AS TO WHY TERMINATION IS
`APPROPRIATE
`Inasmuch as no final written decision has yet been entered, and because
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`Patent Owner and Petitioner are jointly making this motion, termination of this IPR
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`is appropriate, as the Board has not yet “decided the merits of the proceeding.” 35
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`U.S.C. § 317(a).
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`Because the merits of any of the IPRs have not been determined, concluding
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`these IPR proceedings promotes the Congressional goal to establish a more
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`efficient and streamlined patent system that, inter alia, limits unnecessary and
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`counterproductive litigation costs. See “Changes to Implement Inter Partes Review
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`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
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`Covered Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680
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`(Tuesday, August 14, 2012). By permitting termination of IPR proceedings as to
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`the parties upon settlement, the PTAB provides certainty as to the outcome of these
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`proceedings. Terminating IPRs upon settlement fosters an environment that
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`promotes settlements, thereby creating a timely, cost-effective alternative to
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`litigation. Should the Board decide to continue the present proceedings, the
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`Congressional goal of speedy dispute resolutions will be chilled.
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`III. STATUS OF RELATED LITIGATION
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`As noted above, the Parties jointly moved to dismiss with prejudice their
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`related district court litigation concerning the patents mentioned above.
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`IV.
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`REQUEST TO TREAT SETTLEMENT AGREEMENT AS
`CONFIDENTIAL INFORMATION
`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ settlement agreement and any
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`collateral agreements made in contemplation of termination of the proceedings are
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`in writing, and true and correct copies of such documents are being filed herewith
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`as Exhibit 2042 (the “Settlement Agreement”). The Parties desire that the
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`Settlement Agreement be maintained as business confidential information and be
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`kept separate from the files of the above captioned IPR under 37 C.F.R. § 42.74(c)
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`and a separate joint request to that effect is being filed herewith.
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner and Petitioner jointly request that
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`the Board terminate this Inter Partes Review proceeding.
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`Dated: June 23, 2021
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`Respectfully Submitted,
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`By: /s/ Gregory J. Gonsalves
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`
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`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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`
`Lead Counsel for Patent Owner
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`/s/ James L. Day
`James L. Day (Reg. No. 72,681)
`Fabella Braun + Martel LLP
`235 Montgomery Street, 17th Floor
`San Francisco, California, 94104.
`jday@fbm.com
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`Lead Counsel for Petitioner
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`4
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Joint Motion To Terminate was served on this 23rd
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`day of June, 2021 by electronic mail to the following:
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`Lead Counsel
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`James L. Day (Reg. No. 72,681)
`Farella Braun + Martel LLP
`235 Montgomery Street, 17th Floor
`San Francisco, California, 94104.
`jday@fbm.com
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`Backup Counsel
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`Winston Liaw (Reg. No. 78,766)
`Daniel Callaway (Reg. No. 74,267)
`Farella Braun + Martel LLP
`235 Montgomery Street, 17th Floor
`San Francisco, California, 94104.
`wliaw@fbm.com
`dcallaway@fbm.com
`calendar@fbm.com
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`Date: June 23, 2021
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`By: _/Gregory 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
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`5
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