UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`CELLCO PARTNERSHIP D/B/A/ VERIZON WIRELESS,
`Petitioner,
`
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
`
`
`Patent No. 8,213,970
`Filing Date: November 26, 2008
`Issue Date: July 3, 2012
`
`Inventor: Malcolm K. Beyer
`Title: METHOD OF UTILIZING FORCED ALERTS FOR
`INTERACTIVE REMOTE COMMUNICATIONS
`
`
`
`__________________________________________________________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`
`Case No. IPR2023-00056
`__________________________________________________________________
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`CELLCO PARTNERSHIP D/B/A/ VERIZON WIRELESS,
`Petitioner,
`
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
`
`
`Patent No. 8,213,970
`Filing Date: November 26, 2008
`Issue Date: July 3, 2012
`
`Inventor: Malcolm K. Beyer
`Title: METHOD OF UTILIZING FORCED ALERTS FOR
`INTERACTIVE REMOTE COMMUNICATIONS
`
`
`
`__________________________________________________________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`
`Case No. IPR2023-00056
`__________________________________________________________________
`
`
`
`
`
`LIST OF EXHIBITS
`
`IPR2023-00056
`PATENT NO. 8,213,970
`
`Exhibit No. Description of Document
`2001
`Confidential Settlement Agreement
`
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`
`
`
`
`IPR2023-00056
`PATENT NO. 8,213,970
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Cellco Partnership, d/b/a
`
`Verizon Wireless (“Petitioner”) and Patent Owner AGIS Software Development
`
`LLC (“Patent Owner”) (collectively, “the Parties”) jointly request termination of this
`
`proceeding. The Parties have entered into a written confidential settlement
`
`agreement that settles all disputes between them, including those relating to this
`
`proceeding and the related district court action, which was dismissed with prejudice
`
`on January 13, 2023. AGIS Software Development LLC v. Cellco Partnership, d/b/a
`
`Verizon Wireless, Case No. 2-22-cv-00185, Dkt. 50 (E.D. Tex., Jan. 13, 2023).
`
`Pursuant to 37 C.F.R. § 42.74, a true copy of the Parties’ settlement agreement
`
`(including any other related agreement) has been filed as Exhibit 2001. This Joint
`
`Motion was authorized by the Board pursuant to e-mail correspondence on January
`
`19, 2023.
`
`Pursuant to 37 C.F.R. §§ 42.5 and 42.72, the Board may terminate a trial
`
`without rendering a final written decision, where appropriate, including pursuant to
`
`a joint request under 35 U.S.C. §§ 317(a) or 327(a). See Winplus N. Am., Inc. v.
`
`Pilot, Inc., IPR2018-00488, Paper 12 (P.T.A.B. Oct. 24, 2018). Under section
`
`317(a), an inter partes review shall be terminated upon such joint request “unless
`
`the Office has decided the merits of the proceeding before the request for termination
`
`is filed.” There are no other preconditions recited in 35 U.S.C. § 317(a). “There are
`
`strong public policy reasons to favor settlement between the parties to a proceeding.
`
`1
`
`
`
`
`
`
`
`IPR2023-00056
`PATENT NO. 8,213,970
`
`
`. . . The Board expects that a proceeding will terminate after the filing of a settlement
`
`agreement, unless the Board has already decided the merits of the proceeding.”
`
`PTAB Consolidated Trial Practice Guide at 86 (November 2019).
`
`This proceeding is in a preliminary stage because trial has not been instituted
`
`and the Board has not finally decided the merits. Accordingly, it is appropriate for
`
`the Board to exercise its authority pursuant to 37 C.F.R. § 42.71 to terminate this
`
`proceeding in view of the settlement entered into between Petitioner and Patent
`
`Owner. By granting the present Motion, the Board and the Parties can conserve
`
`resources. Additionally, maintaining the proceeding would discourage further
`
`settlements, as patent owners in similar situations would have a strong disincentive
`
`to settle if they perceived that an inter partes review would continue regardless of a
`
`settlement.
`
`As required by statute and as directed by the Board, the Parties are filing
`
`concurrently herewith, as a separate submission, a Joint Motion to Treat Settlement
`
`Agreement as Business Confidential and to Keep Separate, pursuant to 35 U.S.C.
`
`§ 317(b), along with the true copy of the written settlement agreement, which
`
`includes all agreements between the Parties related to this proceeding. See Exhibit
`
`2001. The Parties request that the settlement agreement be treated as business
`
`confidential information and be kept separate from the files of the involved patent.
`
`The Parties certify that there are no other collateral agreements or understandings,
`
`2
`
`
`
`
`
`
`
`IPR2023-00056
`PATENT NO. 8,213,970
`
`
`oral or written, between the parties made in connection with, or in contemplation of,
`
`the termination of this proceeding.
`
`For the foregoing reasons, Petitioner and Patent Owner respectfully request
`
`termination of this inter partes review.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Dated: January 20, 2023
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`Dated: January 20, 2023
`
`By:
`
` /
`
`/Vincent J. Rubino, III
`Vincent. J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`
`Attorneys for Patent Owner,
`AGIS Software Development LLC
`
`
`Respectfully submitted,
`
` /
`
`
`/Justin J. Oliver
`Justin J. Oliver (Reg. No. 44,986)
`Lead Counsel for Petitioner
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, DC 20001
`Phone: 202-721-5423
`Fax: 202-344-8300
`
`Attorneys for Petitioner Cellco Partnership,
`d/b/a Verizon Wireless
`
`
`3
`
`
`
`
`
`
`
`
`
`IPR2023-00056
`PATENT NO. 8,213,970
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on January 20,
`
`2023, a complete and entire copy of this Joint Motion to Terminate and its supporting
`
`exhibits were provided by email, to the Petitioner by serving the email
`
`correspondence addresses of record as follows:
`
`Justin J. Oliver
`Email: joliver@venable.com
`Stephen K. Yam
`Email: syam@venable.com
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, DC 20001
`Phone: 202-721-5423
`Fax: 202-344-8300
`
`Attorneys for Cellco Partnership d/b/a Verizon Wireless
`
`
`
`January 20, 2023
`
`
`
`
`
`
`
`
`
`By:
`
`
`/Vincent J. Rubino, III /
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
