UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`HEWLETT PACKARD ENTERPRISE CO.,
`ARUBA NETWORKS, LLC
`CISCO SYSTEMS, INC.
`APPLE INC.,
`Petitioners,
`
`v.
`
`BILLJCO, LLC,
`Patent Owner.
`
`
`
`Case: IPR2022-00426
`
`U.S. Patent No. 8,761,804
`
`
`
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW AS TO
`PETITIONERS HEWLETT PACKARD ENTERPRISE CO. AND
`ARUBA NETWORKS, LLC AND TO TREAT SETTLEMENT
`AGREEMENT AS CONFIDENTIAL
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`HEWLETT PACKARD ENTERPRISE CO.,
`ARUBA NETWORKS, LLC
`CISCO SYSTEMS, INC.
`APPLE INC.,
`Petitioners,
`
`v.
`
`BILLJCO, LLC,
`Patent Owner.
`
`
`
`Case: IPR2022-00426
`
`U.S. Patent No. 8,761,804
`
`
`
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW AS TO
`PETITIONERS HEWLETT PACKARD ENTERPRISE CO. AND
`ARUBA NETWORKS, LLC AND TO TREAT SETTLEMENT
`AGREEMENT AS CONFIDENTIAL
`
`
`
`EXHIBIT LIST
`
`Exhibit No. Description
`1001
`U.S. Patent No. 8,761,804 (“the ’804 Patent”)
`
`1002
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`1003
`
`1004
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`1005
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`1006
`
`1007
`
`1008
`
`1009
`
`1010
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`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`Prosecution History of U.S. Patent No. 8,761,804
`
`Curriculum Vitae of Darrell D.E. Long
`
`Declaration of Darrell D.E. Long, dated January 14, 2022
`
`U.S. Patent No. 7,123,926 (“Himmelstein”)
`
`U.S. Patent Application Publication No. 2003/0014181 (“Myr”)
`
`U.S. Patent No. 6,327,535 (“Evans”)
`
`U.S. Patent No. 8,600,341
`
`Prosecution History of U.S. Patent No. 8,600,341
`
`U.S. Patent Application Publication No. 2007/0030824
`(“Ribaudo”)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Apple, Inc.’s
`Opening Claim Construction Brief, Dkt. No. 32 (W.D. Tex. Dec.
`2, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Agreed
`Scheduling Order, Dkt. No. 27 (W.D. Tex. Sept. 11, 2021)
`
`BillJCo, LLC v. Cisco Sys., Inc., Case No. 2:21-cv-181, BillJCo,
`LLC v. Hewlett-Packard Enterprise Co. and Aruba Networks,
`Case No. 2:21-cv-183, Docket Control Order, Dkt. No. 44 (E.D.
`Tex. Oct. 25, 2021)
`
`Dufresne, A., et al., How Reliable are Trial Dates Relied on by
`the PTAB in the Fintiv Analysis? (Oct. 29, 2021)
`
`Fintiv, Inc. v. Apple Inc., Case No. 6:21-cv-926-ADA, Order
`(Oct. 4, 2021)
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`1
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`
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`Exhibit No. Description
`1016
`
`BillJCo, LLC v. Cisco Sys., Inc., Case No. 2:21-cv-181, Cisco
`Systems Inc.’s Motion to Transfer Venue, Dkt. No. 36 (E.D.
`Tex. Oct. 11, 2021)
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`BillJCo, LLC v. Hewlett-Packard Enterprise Co. and Aruba
`Networks, Case No. 2:21-cv-183, Hewlett-Packard Enterprise
`Company’s and Aruba Networks, LLC’s Opposed Motion to
`Transfer Venue to the Northern District of California Under 28
`U.S.C. § 1404, Dkt. No. 34 (E.D. Tex. Oct. 4, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Defendant’s
`Motion to Dismiss Plaintiff’s Claims of Willful Infringement as
`to Each Patents-in-Suit and Plaintiff’s Claims of Indirect
`Infringement as to Each Patents-in-Suit, Dkt. No. 16 (W.D. Tex.
`Aug. 2, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Apple Inc.’s
`Opposed Motion to Transfer Venue Pursuant to 28 U.S.C. §
`1404, Dkt. No. 26 (W.D. Tex. Sept. 10, 2021)
`
`Curriculum Vitae listing Prior Litigation Engagements for
`Darrell D.E. Long
`
`Jackson, C., Radar and LORAN, Popular Electronics (July 1959)
`
`Letter from Krishnan Padmanabhan, dated January 14, 2022
`
`Declaration of Rose Cordero Prey In Support of Motion to
`Appear Pro Hac Vice
`
`Claim Construction Memorandum Opinion and Order, BillJCo,
`LLC v. Hewlett Packard Enter. Co., No. 2:21-cv-00183 (E.D.
`Tex. Mar. 14, 2021)
`
`Defendants Cisco Sys., Inc.’s Hewlett Packard Enter. Co.’s and
`Aruba Networks LLC’s Mot. for Leave to Amend Invalidity
`Contentions, No. 2:21-cv-00181-JRG, Dkt. 94 (filed Feb. 25,
`2022)
`
`2
`
`
`
`
`
`
`
`Exhibit No. Description
`1026
`Defendants Hewlett Packard Enter. Co’s and Aruba Networks,
`LLC’s Mot. to Leave to Amend Invalidity Contentions, No. 2:21-
`cv-00181, Dkt. 104 (filed Mar. 21, 2022).
`
`May 26, 2022 Order Granting Apple Inc.’s Petition for Writ of
`Mandamus
`
`Judge Gilstrap’s Order Granting Motion to Stay
`
`BillJCo – HPE Settlement Agreement
`
`1027
`
`1028
`
`1029
`
`
`
`
`3
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioners Hewlett
`
`Packard Enterprise Co. and Aruba Networks, LLC (collectively, “HPE”) and Patent
`
`Owner BillJCo, LLC (“Patent Owner”) (collectively “the Parties”), jointly request
`
`termination of inter partes review (“IPR”) of the pending proceeding with respect to
`
`HPE. The dispute between HPE and Patent Owner has been resolved pursuant to a
`
`written agreement (the “Settlement Agreement”). (Ex-1029.) As such, the Parties
`
`now move to terminate this IPR proceeding with respect to HPE.1
`
`In accordance with 37 C.F.R. § 42.20(b), the Parties jointly sought
`
`authorization to file this motion, and received such authorization from the Board on
`
`August 25, 2022.
`
`Termination of HPE is proper for at least the following reasons: First, the
`
`Board has not yet “decided the merits of the proceeding before the request for
`
`termination is filed.” 35 U.S.C. § 317(a); 77 Fed. Reg. at 48,768 (“The Board expects
`
`that a proceeding will terminate after the filing of a settlement agreement, unless the
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`Board has already decided the merits of the proceeding.”). While the Board issued
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`its institution decision, Patent Owner has not yet filed its Patent Owner Response.
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`Therefore, the Board has not yet reached a final decision on the merits of the
`
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`1 The IPR will continue with respect to Petitioner Apple Inc.
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`4
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`proceeding, which supports termination. Id.; 35 U.S.C. § 317(a) (“[a]n inter partes
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`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.”).
`
`Second, the Parties are jointly requesting termination, and “[t]here are strong
`
`public policy reasons to favor settlement between the parties to a proceeding.” 77
`
`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
`
`Third, the related litigation proceeding styled as BillJCo, LLC v. Cisco
`
`Systems, Inc., Case No. 2:21-cv-183 (E.D. Tex.), which involved the patent at issue
`
`in this proceeding has been recently terminated pursuant to the Settlement
`
`Agreement.
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`Fourth, the Settlement Agreement has been made in writing. A true and
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`correct copy of such agreement is concurrently being filed 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) pursuant to
`
`the Board’s authorization provided on August 25, 2022. The Parties certify that there
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`are no collateral agreements or understandings made in connection with, or in
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`contemplation of, the termination of this inter partes review. The Parties jointly
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`request that the Settlement Agreement be treated as “BOARD ONLY and be “kept
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`separate from the file of the involved patent[], and shall be made available” only in
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`accordance with 35 U.S.C. § 317(b).
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`5
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`Thus, for the foregoing reasons, the Parties jointly and respectfully request
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`that the Board terminate the instant proceeding with respect to HPE. Further, counsel
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`for HPE identified below withdraw from representation of any Petitioners in the
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`instant proceeding.
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`
`
`Date: September 16, 2022
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`
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`
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`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`
`
`By: /Andrew R. Sommer/
`Andrew R. Sommer (Reg. No. 53,932)
`Greenberg Traurig, LLP
`1750 Tysons Boulevard
`McLean, VA 22102
`T: (703) 749-1370
`sommera@gtlaw.com
`
`Counsel for Petitioners
`
`/Brian 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
`
`Counsel for Patent Owner
`
`6
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the foregoing and
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`any new exhibits have been electronically served on the Patent Owner by emailing
`
`the following addresses:
`
`brian.michalek@saul.com
`joseph.kuo@saul.com
`brian.landry@saul.com
`IPGroupMailbox@saul.com
`
`
`/Andrew R. Sommer/
`Andrew R. Sommer (Reg. No. 53,932)
`Greenberg Traurig, LLP
`1750 Tysons Boulevard
`McLean, VA 22102
`T: (703) 749-1370
`sommera@gtlaw.com
`
`
`Date: September 16, 2022
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`
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`7
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