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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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`INTEL CORPORATION,
`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
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`PTAB Case No. IPR2020-01576
`Patent No. 8,265,096
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`JOINT MOTION TO TERMINATE
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`150941694.2
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Intel Corporation (“Pe-
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`titioner”) and UNM Rainforest Innovations (“Patent Owner”) jointly request termi-
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`nation of this inter partes review (IPR) of U.S. Patent No. 8,265,096 (“’096 patent”),
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`Case No. IPR2020-01576, and termination of the proceeding. The parties note that
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`the Patent Owner’s Preliminary Response is due on January 26, 2021.
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`The parties have settled with respect to the challenged patent and have reached
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`agreement to terminate this IPR. In accordance with 37 C.F.R. § 42.20(b), the parties
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`received authorization from the Board to file this motion on Tuesday, January 19,
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`2021.
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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 favor
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`settlement between the parties to a proceeding.”) (emphasis added).
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`Both Congress and the federal courts have expressed a strong interest
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`in encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc.
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`v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.]
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`68 is to encourage the settlement of litigation.”); Bergh v. Dept. of
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`Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors settle-
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`ment of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit
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`places a particularly strong emphasis on settlement. See Cheyenne
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`River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting
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`that the law favors settlement to reduce antagonism and hostility be-
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`tween parties). Here, no public interest or other factors weigh against
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`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 added);
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`77 Fed. Reg. 48768 (“The Board expects that a proceeding will termi-
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`nate after the filing of a settlement agreement, unless the Board has al-
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`ready decided the merits of the proceeding.”) Indeed, the Board has not
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`yet made a decision on institution of this IPR. Petitioner filed its peti-
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`tion for IPR on September 14, 2020. No Motions are outstanding in
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`this proceeding. No other party’s rights will be prejudiced by the ter-
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`mination of this IPR. This supports the propriety of terminating this
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`proceeding even though the settlement and termination provisions of
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`35 U.S.C. § 317, on their face, apply only to “instituted” proceedings.
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`77 Fed. Reg. 48680, 48686 (Aug. 14, 2012) (And 35 U.S.C. 317(a) pro-
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`vides “An inter partes review instituted under this chapter shall be ter-
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`minated with respect to any petitioner upon the joint request of the pe-
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`titioner and the patent owner, unless the Office has decided the merits
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`of the proceeding before the request for termination is filed.”)
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`Patent Owner has withdrawn the claims against accused products con-
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`taining Intel Wi-Fi products in the District court in the action of UNM
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`Rainforest Innovations v. Dell Techs. Inc., et al., Case No. 6:20-cv-
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`00468-ADA (Doc. No. 53) pending in the Western District of Texas.
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`The claims against accused products containing non-Intel Wi-Fi prod-
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`ucts still remain.
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`The following proceedings relate to the ’096 patent.
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` Qualcomm Inc. v. UNM Rainforest Innovations, IPR2021-00375: The
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`petition was filed by Qualcomm on December 28, 2020 with a motion
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`for joinder to the present proceeding. The Notice of Accord Filing Date
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`was filed January 21, 2021 and gave Patent Owner three months to file
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`a preliminary response.
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` UNM Rainforest Innovations v. Dell Techs. Inc., et al., No. 6:20-cv-
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`00468 (W.D. Tex.): The proceeding continues against Defendants Dell
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`Technologies Inc., Dell Inc., and EMC Corporation for the accused
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`products that do not contain Intel Wi-Fi products. Trial is set for No-
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`vember 8, 2021.
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` UNM Rainforest Innovations v. ZyXEL Commc’n Corp., No. 6:20-cv-
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`00522 (W.D. Tex.): UNM filed a complaint against ZyXEL Communi-
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`cations Corp. (ZyXEL) on June 12, 2020 alleging patent infringement
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`of the ’096 patent, among other patents. ZyXEL filed a Sealed Motion
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`to Dismiss on November 2, 2021 which has not been ruled on and a
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`Markman Hearing is set for May 13, 2021. The trial is set for April 4,
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`2022.
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` UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv-
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`00142 (W.D. Tex.): UNM filed a complaint against ASUSTek Com-
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`puter Inc. (ASUSTek) on February 24, 2020 alleging patent infringe-
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`ment of the ’096 patent, among other patents. Trial is set for January 3,
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`2022.
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` UNM Rainforest Innovations v. D-Link Corp., No. 6:20-cv-00143
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`(W.D. Tex.): UNM filed a complaint against D-Link Corporation (D-
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`Link) on February 24, 2020 alleging patent infringement of the ’096
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`patent, among other patents. As of this filing, there has been no Case
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`Management Conference. D-Link filed a Motion to Dismiss Plaintiff’s
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`Complaint for Lack of Standing on December 22, 2020, and Plaintiff
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`has responded.
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` UNM Rainforest Innovations v. TP-Link Techs. Co., Ltd., No. 6-19-cv-
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`00262 (W.D. Tex.): UNM filed a complaint against TP-Link Technol-
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`ogies Co., Ltd. (TP-Link) on April 12, 2019 alleging patent infringe-
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`ment of the ’096 patent, among other patents. As of this filing, TP-Link
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`has not been served.
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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 1028. There are no
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`other agreements, oral or written, between the parties made in connection with, or in
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`contemplation of, the termination of this proceeding.
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`150941694.2
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`Dated: January 22, 2021
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`Respectfully submitted,
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`PERKINS COIE LLP
`1201 Third Avenue
`Suite 4900
`Seattle, WA 98101
`(206) 359-8000
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`Dated: January 22, 2021
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` /Jay P. Kesan /
`Jay P. Kesan, Reg. No. 37,488
`Jkesan@dimuro.com
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tyson’s Blvd., Suite 1500
`Tysons Corner, VA 22102
`Telephone: (703) 289-5118
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` /Christina McCullough/
`Lead Counsel
`Christina McCullough, Reg. No. 58,720
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`Back-up Counsel
`Brianna Kadjo, Reg. No. 74,307
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`Attorneys for Intel Corporation
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`/Ari Rafilson /
`Alfonso Chan, Reg. No. 45,964
`Ari Rafilson, Reg. No. 58,693
`achan@shorechan.com
`arafilson@shorechan.com
`SHORE CHAN DEPUMPO, LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`Telephone: (214) 593-9110
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`Attorneys for Patent Owner
`UNM Rainforest Innovations
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`150941694.2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§42.6(3)(1), 42.6(e)(4), and 42.25(b), the under-
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`signed certifies that a complete copy of JOINT MOTION TO TERMINATE
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`was filed electronically through the Patent Trial and Appeal Board’s PTAB E2E
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`5 System and provided, via electronic service, to the Patent Owner by serving the
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`correspondence address of record as follows:
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`Jay P. Kesan, Reg. No. 37,488
`Jkesan@dimuro.com
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tyson’s Blvd., Suite 1500
`Tysons Corner, VA 22102
`Telephone: (703) 289-5118
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`Dated: January 22, 2021
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`Alfonso Chan, Reg. No. 45,964
`Ari Rafilson, Reg. No. 58,693
`achan@shorechan.com
`arafilson@shorechan.com
`SHORE CHAN DEPUMPO, LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`Telephone: (214) 593-9110
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`Attorneys for Patent Owner
`UNM Rainforest Innovations
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`Respectfully submitted,
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`/ Kate Smith /
`Kate Smith
`Paralegal
`Perkins Coie LLP
`3105 Porter Drive
`Palo Alto, CA 94304
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`150941694.2
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