UNITED STATES PATENT AND TRADEMARK
`OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TRILLER, INC.,
`Petitioner,
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`v.
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`TIKTOK PTE. LTD.,
`Patent Owner.
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`Case IPR2022-00180
`Patent 9,992,322 B2
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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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`OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TRILLER, INC.,
`Petitioner,
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`v.
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`TIKTOK PTE. LTD.,
`Patent Owner.
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`Case IPR2022-00180
`Patent 9,992,322 B2
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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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`Proceeding No. IPR2022-00180
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Triller,
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`Inc. (“Triller” or “Petitioner”) and Patent Owner TikTok Pte. Ltd. (“TikTok” or
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`“Patent Owner”) jointly request termination of inter partes review of U.S. Patent
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`No. 9,992,322 (the “’322 Patent”) in IPR2022-00180 and request that the
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`settlement agreement be treated as business confidential information pursuant to
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`35 U.S.C. § 317(b). The Board authorized the parties to file this Joint Request
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`on September 28, 2022, via email.
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`I.
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`Termination of Case No. IPR2022-00180 Would Be Appropriate.
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`Termination of IPR2022-00180 by the Board would be appropriate. The
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`parties have executed a settlement agreement that resolves all of their disputes
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`concerning the ’322 Patent—expressly including the present IPR—and the Board
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`has not yet rendered its final decision in the proceeding. Furthermore, the Board
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`should terminate IPR2022-00180 because termination of the present inter partes
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`review would resolve all presently pending disputes between the parties pertaining
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`to the ’322 Patent, because the district court case between the parties involving the
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`’322 patent has been dismissed, no further litigation or other proceedings involving
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`the ’322 Patent are contemplated by either party, and because both Petitioner and
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`Patent Owner agree that this inter partes review should be terminated.
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`Accordingly, good cause exists to terminate this proceeding based on settlement as
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`the Board has not yet rendered its final decision in this proceeding. Moreover, no
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`Proceeding No. IPR2022-00180
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`public interest or other factors militate against termination of this proceeding,
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`especially where the Board seeks to favor settlement between parties in an IPR
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`proceeding.
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`As set forth in 35 U.S.C. § 317 and 37 C.F.R. § 42.74, the agreement has
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`been made in writing in the form of a settlement agreement executed by the parties,
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`and a true and correct copy of that settlement agreement has been filed as Exhibit
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`2007.
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`The parties hereby represent that the document filed as Exhibit 2007
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`represents all agreements made in connection with, or in contemplation of, the
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`termination of this proceeding. The parties note that although section 6.9 of the
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`settlement agreement refers to “attachments,” there are no attachments to the
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`agreement and Exhibit 2007 represents the entirety of the agreement between the
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`parties in connection with, or in contemplation of, the termination of this
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`proceeding. All such agreements have been filed with the Board as required by §
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`317(b) and 37 C.F.R. § 42.74(b).
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`As stated in 35 U.S.C. § 317(a), because Petitioner and Patent Owner
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`request this termination, no estoppel under 35 U.S.C. § 315(e) shall attach as to
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`Petitioner.
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`Submitted concurrently herewith is a request by Petitioner and Patent Owner
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`that the settlement agreement be treated as business confidential information, be
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`Proceeding No. IPR2022-00180
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`kept separate from the file of the involved patents, and be made available only to
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`Federal Government agencies on written request, or to any person on a showing of
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`good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`II. Conclusion
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`Proceeding No. IPR2022-00180
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`Therefore, Petitioner and Patent Owner respectfully request termination of the
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`inter partes review of U.S. Patent No. 9,992,322, Case No. IPR2022-00180.
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`Dated: September 28, 2022
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`Dated: September 29, 2022
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`By: / Chad Nydegger/
`Chad E. Nydegger, Reg. No. 61,020
`Brian N. Platt, Reg. No. 62,249
`David R. Todd, Reg. No. 41,348
`WORKMAN NYDEGGER
`60 East South Temple, Suite 1000
`Salt Lake City, UT 84111
`Telephone: 801-533-9800
`Facsimile: 801-328-1707
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`Attorneys for Petitioner
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`By: /Patrick J. Bisenius/
`W. Karl Renner, Reg. No. 41,265
`Dan Smith, Reg. No. 71,278
`Patrick J. Bisenius, Reg. No. 63,893
`Craig A. Deutsch, Reg. No. 69,264
`Kim H. Leung, Reg. No. 64,399
`Adam J. Kessel, Pro Hac Vice
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`Attorneys for Patent Owner
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`Proceeding No. IPR2022-00180
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6, the undersigned hereby certifies that on
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`September 29, 2022, a copy of the foregoing Joint Motion to Terminate Proceeding
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`Pursuant To 35 U.S.C. § 317 and 37 C.F.R. § 42.74 was served via electronic mail,
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`on the following counsel of record for Petitioner:
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`Chad E. Nydegger (Reg. No. 61,020)
`Brian N. Platt (Reg. No. 62,249)
`David R. Todd (Reg. No. 41,348)
`WORKMAN NYDEGGER
`60 East South Temple, Suite 1000
`Salt Lake City, Utah 84111
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`Email:
`cnydegger@wnlaw.com
`bplatt@wnlaw.com
`dtodd@wnlaw.com
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`/Michael Stanwyck/
`Michael Stanwyck
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
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