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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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`_________________
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`MOBILE IRON, INC.
`Petitioners
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`Case IPR2021-00162
`Patent 8,442,489
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`_________________
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Case IPR2021-00162
`Attorney Docket No: I4520.00019
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`
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`Exhibit
`No.
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`1001
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`LIST OF EXHIBITS
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`Description of Document
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`U.S. 8,442,489 (the “’489 Patent”)
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`1002
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`Declaration of Markus Jakobsson, Ph.D.
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`1003
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`1004
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`1005
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`1006
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`File History of the ’489 Patent
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`File History of U.S. 8,010,989
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`U.S. 7,665,118 to Mann et al. (Mann)
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`U.S. 7,043,263 to Kaplan et al. (Kaplan)
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`National Institute of Science and Technology (NIST), “Federal
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`1007
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`S/MIME V3 Client Profile,” NIST Special Publication 800-49
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`(2002) (S/MIME-Profile)
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`R. Karri and P. Mishra, “Minimizing Energy Consumption of Secure
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`1008
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`Wireless Session with QoS Constraints," in Proceedings of the2002 IEEE
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`International Conference on Communications Conference (ICC 2002) vol.
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`4, pp. 20532057 (2002) (Karri)
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`Aoki, Kazumaro, and Helger Lipmaa, “Fast Implementations of AES
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`Candidates," in Proceedings of AES Candidate Conference, pp. 106-120
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`1009
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`(2000).
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`i
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`Case IPR2021-00162
`Attorney Docket No: I4520.00019
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`Description of Document
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`Srivaths Ravi et al., “Security in Embedded Systems: Design Challenges,” 3
`ACM Transactions on Embedded Computing Systems, pp. 461–491 (2004)
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`U.S. Patent Application Publication No. US 2003/0182435 by Redlich et al.
`(Redlich)
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`Federal Information Processing Standards Publication 197 (FIPS-197)
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`Original Complaint filed April 27, 2020 in MobileIron. Inc. v. Blackberry
`Corp., et al., Case No. 3:20-cv-02877 (N.D. Cal.)
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`Exhibit
`No.
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`1010
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`1011
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`1012
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`1013
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`1014
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`First Amended Complaint filed June 29, 2020 in MobileIron. Inc. v.
`Blackberry Corp., et al., Case No. 3:20-cv-02877 (N.D. Cal.)
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`Affidavit of Elizabeth Rosenberg Regarding S/MIME-Profile
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`1015
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`Not used
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`1016-1054
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`Settlement agreement
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`1055
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`ii
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`Petitioner and Patent Owner (collectively “Parties”) hereby jointly move for
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`Case IPR2021-00162
`Attorney Docket No: I4520.00019
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`an order terminating the preliminary proceeding initiated by the petition for inter
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`partes review filed on November 5, 2020, directed to Patent No. 8,442,489 (“the
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`challenged patent”) and assigned case number IPR2021-00162.
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`Patent Owner has yet to file a preliminary response. The Board has yet to
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`issue a decision to institute trial.
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`1. Reasons Why Termination Is Appropriate
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`The Board emailed the Parties on March 3, 2021 to authorize this filing of a
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`“Joint Motion To Terminate.” Termination is proper because the Parties are jointly
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`requesting termination, this IPR proceeding is still in its early stages, and the Board
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`has not yet “decided the merits of the proceeding.” Samsung Electronics Co., Ltd.
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`et al v. Neodron Ltd., IPR2020-01682, Paper 14, 3 (February 18, 2021); see also
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`Samsung Electronics Co., Ltd. v. Fundamental Innovation Systems Int’l, IPR2018-
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`00605, Paper 10, 2 (PTAB July 16, 2018) (noting that 35 U.S.C. § 317 “does not
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`govern settlement prior to institution,” but explaining that “it is appropriate to
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`dismiss the proceedings pursuant to 37 C.F.R. § 42.71(a)”). Accordingly,
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`termination is appropriate here.
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`The parties are filing herewith as Exhibit 1025, a true copy of settlement
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`agreement entered between the Parties and executed on February 22, 2021. See 37
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`2
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`C.F.R. § 42.74(c). The settlement agreement was entered into in contemplation of
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`Case IPR2021-00162
`Attorney Docket No: I4520.00019
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`terminating this proceeding. This settlement agreement is the only agreement or
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`understanding between Petitioner and Patent Owner made in connection with, or in
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`contemplation of terminating this proceeding. See 37 C.F.R. § 42.74(b). A request
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`is being filed herewith to treat this agreement as “business confidential information”
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`and to keep it separate from the files of the involved patent. See 37 C.F.R. § 42.74(c).
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`The Parties understand that if the Board terminates this IPR proceeding, no
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`estoppel under 35 U.S.C. § 315(e) or 37 C.F.R. § 42.73(d)(1) will attach to
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`Petitioner. The Parties understand that if the Board terminates this petition for inter
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`partes review before a final written decision on patentability, no preclusion will
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`attach to Patent Owner under 37 C.F.R. § 42.73(d)(3).
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`The lawsuit between Patent Owner and Petitioner involving the challenged
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`patent here has been dismissed. The parties do not contemplate any litigation or
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`proceeding involving the challenged patent in the foreseeable future.
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`2.
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`No Future Participation by Petitioner
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`Petitioner will not be participating further in this proceeding.
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`3.
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`Conclusion
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`The parties have settled all disputes relating to the challenged patent. This
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`inter partes review is in an early stage, and the Board has not entered a final written
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`3
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`decision on the merits in this proceeding. Accordingly, the parties respectfully
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`Case IPR2021-00162
`Attorney Docket No: I4520.00019
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`request the Board to terminate this proceeding in its entirety.
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`Date: March 9, 2021
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`Respectfully submitted,
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`
` /R. Parrish Freeman/
`R. Parrish Freeman, Reg. No. 42,556
`Maschoff Brennan
`Counsel for Petitioner
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` /Michael T. Hawkins/
`Michael T. Hawkins, Reg. No. 57,867
`Fish & Richardson P.C.
`Counsel for Patent Owner
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`4
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`Case IPR2021-00162
`Attorney Docket No: I4520.00019
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1), the undersigned certifies that on March 9,
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`2021 a copy of Joint Motion to Terminate Proceeding and its supporting exhibit
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`were provided via email, to Patent Owner by serving the email correspondence
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`addresses of record as follows:
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`Michael T. Hawkins
`Nicholas Stephens
`Kenneth W. Darby
`Kim Leung
`Craig A. Deutsch
`FISH & RICHARDSON
`60 South Sixth Street
`Minneapolis, MN 55402
`
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`Email: hawkins@fr.com
` nstephens@fr.com
` kdarby@fr.com
` leung@fr.com
` dwutsch@fr.com
` IPR21828-0059IP1@fr.com
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`/R. Parrish Freeman/
`R. Parrish Freeman
`Maschoff Brennan
`1389 Center Drive, Suite 300
`Park City, Utah 84098
`(435) 252-1360
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