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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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`CISCO SYSTEMS, INC.,
`APPLE INC.,
`HEWLETT PACKARD ENTERPRISE CO.,
` ARUBA NETWORKS, LLC
`
`Petitioners,
`
`- vs. -
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`BILLJCO, LLC,
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`Patent Owner
`_____________________________
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`IPR2022-00426
`
`U.S. Patent No. 8,761,804
`_____________________________
`
`JOINT MOTION TO TERMINATE INTER PARTES
`REVIEW AS TO PETITIONER CISCO SYSTEMS, INC.
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Cisco
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`Systems, Inc. (“Cisco”) and Patent Owner BillJCo, LLC (“Patent Owner”)
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`(collectively “the Parties”), jointly request termination of inter partes review
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`(“IPR”) of the pending case with respect to Cisco. The dispute between Cisco and
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`Patent Owner has been resolved pursuant to a written agreement (the “Settlement
`
`Agreement”) that resolves the dispute. As such, the Parties now move to terminate
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`this IPR proceeding with respect to Cisco. For the avoidance of doubt, the Parties
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`state that the IPR will continue with respect to Petitioners Apple Inc., Hewlett-
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`Packard Enterprise Co., and Aruba Networks, LLC.
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`In accordance with 37 C.F.R. § 42.20(b), the Parties jointly sought
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`authorization to file this motion, and received such authorization from the Board
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`on May 31, 2022.
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`Termination is proper for at least the following reasons:
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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); 77 Fed.
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`Reg. at 48,768 (“The Board expects that a proceeding will terminate after the filing
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`of a settlement agreement, unless the Board has already decided the merits of the
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`proceeding.”). In this case, no decision regarding whether to grant or deny
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`institution has yet been entered. This supports the propriety of terminating this
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`proceeding. Id. And 35 U.S.C. § 317(a) provides that even “[a]n inter partes review
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`
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`instituted under this chapter shall be terminated with respect to any petitioner upon
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`the joint request of the petitioner and the patent owner, unless the Office has
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`decided the merits of the proceeding before the request for termination is filed.”
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` The Parties are jointly requesting termination. 77 Fed. Reg. 48,756, 48,768
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`(Aug. 14, 2012) (“There are strong public policy reasons to favor settlement
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`between the parties to a proceeding”).
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` The litigation proceeding styled as BillJCo, LLC v. Cisco Systems, Inc.,
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`Case No. 2:21-cv-181 (E.D. Tex.) involving the Patent-At-Issue has been recently
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`terminated pursuant to the Settlement Agreement.
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` The Settlement Agreement, Exhibit 3001, has been made in writing, and a
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`true and correct copy shall be filed with this Office as business confidential
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`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)-(c). The
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`Parties certify that there are no collateral agreements or understandings made in
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`connection with, or in contemplation of, the termination of this inter partes review.
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`For the foregoing reasons, the Parties jointly and respectfully request that the
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`Board terminate the instant proceeding with respect to Cisco. Further, counsel for
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`Cisco identified below withdraw from representation of any Petitioners in the
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`instant proceeding. Counsel for Cisco understands that the remaining Petitioners
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`will file updated Mandatory Disclosures identifying new lead counsel for the
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`instant proceeding.
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`Date: June 9, 2022
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`Respectfully submitted,
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`/s/ Jeffrey D. Blake
`Jeffrey D. Blake (Reg. No. 58,884)
`Merchant & Gould P.C.
`191 Peachtree Street, NE, Suite 3800
`Atlanta, GA 30303
`Tel: (404) 954-5040
`jblake@merchantgould.com
`
`Daniel W. McDonald (Reg. No. 32,044)
`Merchant & Gould P.C.
`191 Peachtree Street, NE, Suite 3800
`Atlanta, GA 30303
`Tel: (404) 954-5040
`dmcdonald@merchantgould.com
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`Counsel for Petitioner
`Cisco Systems, Inc.
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`/s/ Brian R. Michalek
`Brian R. Michalek (Reg. No. 65,816)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7151
`brian.michalek@saul.com
`
`Joseph M. Kuo (Reg. No. 38,943)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7151
`joseph.kuo@saul.com
`
`Brian Landry (Reg. No. 52,074)
`Saul Ewing Arnstein & Lehr LLP
`131 Dartmouth Street, Suite 501
`Boston, MA 02116
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`
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`Tel: (617) 912-0969
`Brian.Landry@saul.com
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`Counsel for Patent Owner
`BillJCo, LLC
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Cisco Systems, Inc.
`Apple Inc.,
`Hewlett Packard Enterprise Co.,
`Aruba Networks, LLC
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`
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`Petitioners
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`§
`§
`§
`§
`§
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`
`
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`IPR2022-00426
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`U.S. Patent No. 8,761,804
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. §§ 42.105 and 42.6,
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`that service was made on the Patent Owner and other Petitioners as detailed below.
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`Date of service
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`
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`June 9, 2022
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`Manner of service
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`Documents served
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`Persons served
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`Joint Motion to Terminate Inter Partes Review as
`to Petitioner Cisco Systems, Inc.
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`Brian R. Michalek (Reg. No. 65,816)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7151
`brian.michalek@saul.com
`
`Joseph M. Kuo (Reg. No. 38,943)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7151
`joseph.kuo@saul.com
`
`Brian Landry (Reg. No. 52,074)
`Saul Ewing Arnstein & Lehr LLP
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`
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`131 Dartmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`Brian.Landry@saul.com
`
`
`/s/ Jeffrey D. Blake
`Jeffrey D. Blake
`Registration No. 58,884
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`
`
`
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