UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HP INC., AMAZON.COM, INC., AMAZON.COM
`SERVICES LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., GOOGLE LLC, DELL
`TECHNOLOGIES INC. and DELL INC.
`Petitioners
`
`v.
`
`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
`
`IPR2022-003671
`Patent No. 10,715,235
`____________
`
`
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`
`1 Apple Inc., and HP Inc., were the original Petitioners in this proceeding (IPR2022-
`00367). Amazon.com, Inc., and Amazon.com Services LLC, which filed a petition
`in IPR2022-01353; Samsung Electronics Co., Ltd., Samsung Electronics America,
`Inc., and Google LLC, which filed a petition in IPR2022-01362; and Dell
`Technologies Inc. and Dell Inc., which filed a petition in IPR2022-01398; were
`joined as Petitioners in this proceeding.
`
`
`
`
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HP INC., AMAZON.COM, INC., AMAZON.COM
`SERVICES LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., GOOGLE LLC, DELL
`TECHNOLOGIES INC. and DELL INC.
`Petitioners
`
`v.
`
`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
`
`IPR2022-003671
`Patent No. 10,715,235
`____________
`
`
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`
`1 Apple Inc., and HP Inc., were the original Petitioners in this proceeding (IPR2022-
`00367). Amazon.com, Inc., and Amazon.com Services LLC, which filed a petition
`in IPR2022-01353; Samsung Electronics Co., Ltd., Samsung Electronics America,
`Inc., and Google LLC, which filed a petition in IPR2022-01362; and Dell
`Technologies Inc. and Dell Inc., which filed a petition in IPR2022-01398; were
`joined as Petitioners in this proceeding.
`
`
`
`
`
`
`
`IPR2022-00367
`USP 10,715,235
`
`Patent Owner XR Communications, LLC (“XR”) and all Petitioners Apple
`
`Inc., HP Inc., Amazon.com, Inc., Amazon.com Services LLC, Samsung Electronics
`
`Co., Ltd., Samsung Electronics America, Inc., Google LLC, Dell Technologies Inc.,
`
`and Dell Inc. (collectively, “Petitioners”) have reached a settlement. Pursuant to 35
`
`U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, the parties jointly request
`
`termination of the inter partes review of U.S. Patent No. 10,715,235 (“Patent-in-
`
`Suit”), Case IPR2022-00367. The parties were authorized to file this joint motion to
`
`terminate by the Board via emails on June 12 and 13, 2023.
`
`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a copy of the
`
`agreements that resolve the disputes between XR and each Petitioner relating to this
`
`IPR are filed herewith as exhibits. There are no other collateral agreements between
`
`the parties made in connection with, or in contemplation of, the termination sought.
`
`Based on the Board’s guidance, and as agreed by the parties, XR is filing each
`
`agreement as “Filing Party and Board Only.” This will ensure that the agreement for
`
`each Petitioner will remain confidential and will not be accessible by other
`
`Petitioners.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), XR and Petitioners
`
`are concurrently filing a Joint Request to Keep Separate, which asks the Board to
`
`treat the settlement agreements as business confidential information, and to keep it
`
`separate from the files of this proceeding and the files of the Patent-in-Suit.
`
`
`
`1
`
`
`
`IPR2022-00367
`USP 10,715,235
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`The parties jointly request that the Board terminate the inter partes review of
`
`the Patent-in-Suit, Case IPR2022-00367.
`
`II. TERMINATION OF THE PROCEEDING IS APPROPRIATE
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`
`chapter shall be terminated with respect to any petitioner upon the joint request of
`
`the petitioner and the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” This inter partes review has
`
`not yet been decided on the merits. XR and each Petitioner have jointly moved to
`
`dismiss the lawsuits involving the Patent-in-Suit, and those lawsuits have been
`
`dismissed. XR and Petitioners do not contemplate any future litigation or proceeding
`
`involving the Patent-in-Suit in the foreseeable future. Further, because XR and
`
`Petitioners jointly request this termination, no estoppel under 35 U.S.C. § 315(e)
`
`shall attach to the Petitioners.
`
`III. CONCLUSION
`XR and all Petitioners have settled their disputes relating to the Patent-in-Suit.
`
`The Board has not entered a final written decision on the merits in this proceeding.
`
`Accordingly, the parties respectfully request that the Board terminate this
`
`proceeding, IPR2022-00367, in its entirety.
`
`
`
`
`
`2
`
`
`
`Dated: June 16, 2023
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`IPR2022-00367
`USP 10,715,235
`
`/ David Holt /
`David Holt, Reg. No. 65,161
`holt2@fr.com
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Counsel for Petitioners Apple Inc. and
`HP Inc.
`/ Ali R. Sharifahmadian /
`Ali R. Sharifahmadian, Reg. No. 48,202
`ali.sharifahmadian@arnoldporter.com
`Arnold & Porter Kaye Scholer LLP
`601 Massachusetts Ave., NW
`Washington, DC 20001-3743
`Tel: 202-942-5000
`Fax: 202-942-5999
`
`Counsel for Petitioners Samsung
`Electronics Co., Ltd., Samsung
`Electronics America, Inc., and Google
`LLC
`
`
`/ Philip Wang /
`Philip Wang Reg. No. 74,621
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`pwang@raklaw.com
`
`Counsel for Patent Owner XR
`Communications, LLC
`
`/ Andrew M. Mason /
`Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioners Amazon.com,
`Inc., and Amazon.com Services LLC
`
`/ Christopher T.L. Douglas /
`Christopher T.L. Douglas (Reg. No.
`56,950)
`christopher.douglas@alston.com
`Alston & Bird LLP
`One South at the Plaza
`101 South Tryon Street, Suite 4000,
`Charlotte, NC 28280-4000
`Tel: 704.444.1000
`Fax: 704.444.1111
`
`Counsel for Petitioners Dell
`Technologies Inc., and Dell Inc.
`
`
`
`3
`
`
`
`IPR2022-00367
`USP 10,715,235
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on June
`
`16, 2023, by filing this document through the Patent Trial and Appeal Case Tracking
`
`System (P-TACTS) system as well as delivering a copy via electronic mail upon all
`
`attorneys of record for Petitioners.
`
`
`Dated: June 16, 2023
`
`
`
`
`
`
`
`
`
`
`
`/ Philip Wang /
`Philip Wang
`
`
`
`
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