`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`AMAZON.COM, INC.,
`
`Petitioner,
`
`
`v.
`
`
`JAWBONE INNOVATIONS LLC,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2023-00251
`
`U.S. Patent No. 11,122,357
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`2002
`
`Description of Document
`Confidential Settlement Agreement
`Confidential Release
`
`i
`
`
`
`
`
`I.
`
`
`
`PRECISE RELIEF REQUESTED
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Amazon.com, Inc. (“Petitioner”)
`
`and Patent Owner Jawbone Innovations, LLC (“Patent Owner”) jointly request that
`
`this inter partes review proceeding involving U.S. Patent No. 11,122,357 (“the ’357
`
`patent”) be terminated based on an agreement between Petitioner and Patent Owner
`
`(“the Parties”).
`
`Patent Owner and Petitioner are parties to an agreement that resolves the
`
`disputes in the above-captioned inter partes review relating to the ’357 patent.
`
`Petitioner and Patent Owner have thus settled their dispute regarding the ’357 patent,
`
`including both this proceeding and Patent Owner’s assertion of the ’357 patent in
`
`the related district court litigation, Jawbone Innovations, LLC v. Amazon.com, Inc.,
`
`Case No. 3:22-cv-06727-TLT (N.D. Cal.). The Parties filed a joint motion to dismiss
`
`with prejudice the related district court action on July 24, 2023, and the district court
`
`entered an order dismissing the case on July 26, 2023.
`
`The agreements resolving the Parties’ dispute include a confidential
`
`settlement agreement between Patent Owner and a third party, as well as a
`
`confidential release agreement between the Parties. Patent Owner submits a true
`
`copy of the confidential agreements in their entirety, filed herewith as Exhibits 2001
`
`and 2002, respectively. The Parties do not anticipate any further litigation between
`
`them concerning the ’357 patent. There are no other agreements, oral or written,
`
`1
`
`
`
`
`
`
`
`between the Parties made in connection with, or in contemplation of, the termination
`
`
`
`of this proceeding.
`
`II. REASONS FOR GRANTING THE MOTION
`
`Generally, 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. See, e.g., Consolidated Trial Practice Guide, 86 (Nov. 2019). The
`
`Board’s policy is in accord with the governing statute, which states that “An 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.” 35 U.S.C. § 317(a). The Board has not decided the merits of this proceeding.
`
`The Board authorized filing of the instant motion on July 26, 2023. Guidance
`
`as to the content of a motion to terminate is provided in Apotex Cop. v. Alcon
`
`Research, Ltd., IPR2013-00428, Paper No. 56. There, the Board indicated that a joint
`
`motion, such as this one, should (a) include a brief explanation as to why termination
`
`is appropriate; (b) identify all parties in any related litigation involving the patent at
`
`issue; (c) identify any related proceedings currently before the Office; and
`
`(d) discuss specifically the current status of each such related litigation or proceeding
`
`with respect to each party to the litigation or proceeding. Id. at 2. This motion
`
`satisfies each of the above requirements.
`
`2
`
`
`
`
`
`
`
`
`
`
`A. Brief Explanation of Why Termination is Appropriate
`
`Good cause exists to terminate this proceeding because the Parties have settled
`
`their dispute regarding the ’357 patent and the Board has not determined the merits
`
`of the proceeding. Terminating this proceeding thus serves the interests of judicial
`
`economy as well as the mutual interests of the Parties.
`
`Termination is appropriate because no post-institution briefs have been filed,
`
`oral argument has not been held, and the Board has not decided the merits of the
`
`proceeding, i.e., a final written decision has not been issued. Under 35 U.S.C.
`
`§ 317(a), this proceeding “shall be terminated” because the Parties are jointly
`
`requesting termination and the Office has not yet “decided the merits of the
`
`proceeding before the request for termination is filed.” The Parties have resolved
`
`their disputes and executed an agreement which contemplates requesting termination
`
`of this proceeding and dismissing the Parties’ related proceeding regarding the ’357
`
`patent in Jawbone Innovations, LLC v. Amazon.com, Inc., Case No. 3:22-cv-06727-
`
`TLT (N.D. Cal.).
`
`B. All Parties in Any Pending Related Litigation Involving the
`Patent at Issue
`
`The following litigation is related to the ’357 patent and the Parties:
`
`• Jawbone Innovations, LLC v. Amazon.com, Inc., Case No. 3:22-cv-
`
`06727-TLT (N.D. Cal.)
`
`3
`
`
`
`
`
`
`
`A joint motion to dismiss with prejudice was submitted in the above action on July
`
`
`
`24, 2023, and the Court granted that motion on July 26, 2023.
`
`The ’357 patent is also the subject of concurrent litigation between Patent
`
`Owner and Google LLC (“Google”) in the Northern District of California: Jawbone
`
`Innovations, LLC v. Google LLC, Case No. 3:23-cv-00466-TLT (N.D. Cal.) (“the
`
`Google Litigation”). Petitioner is not a party to the Google Litigation. Patent Owner
`
`and Google have also settled their dispute and have filed a stipulation of dismissal
`
`with prejudice in the Google Litigation.
`
`The ’357 patent is also the subject of litigation between Patent Owner and
`
`other defendants in the following cases. Petitioner is not a party to any of the below
`
`litigations.
`
`• Jawbone Innovations, LLC v. Guangdong OPPO Mobile
`
`Telecommunications Corp., Ltd., d/b/a OPPO, Case No. 3:23-cv-00079
`
`(E.D. Tex.);
`
`• Jawbone Innovations, LLC v. HTC Corporation, Case No. 3:23-cv-00077
`
`(E.D. Tex.);
`
`• Jawbone Innovations, LLC v. LG Electronics, Inc., Case No. 2:23-cv-00078
`
`(E.D. Tex.);
`
`• Jawbone Innovations, LLC v. Meta Platforms, Inc., Case No. 6:23-cv-00158
`
`(W.D. Tex.);
`
`4
`
`
`
`
`
`
`
`
`
`
`• Jawbone Innovations, LLC v. Panasonic Holdings Corporation, Case No.
`
`2:23-cv-00081 (E.D. Tex.);
`
`• Jawbone Innovations, LLC v. Sony Electronics Inc., Case No. 2:23-cv-
`
`01161-MEF-LDW (D.N.J.); and
`
`• Jawbone Innovations, LLC v. ZTE Corporation, Case No. 3:23-cv-00082
`
`(E.D. Tex.).
`
`C. Related Proceedings Currently Before the Office
`
`The ’357 patent is the subject of IPR2022-01124 filed by Google (the “Google
`
`IPR”). As noted above, Patent Owner and Google have settled their dispute and have
`
`filed a motion to terminate the Google IPR.
`
`The ’357 patent is further the subject of IPR2023-01130, IPR2023-01134, and
`
`IPR2023-01153, which have not been instituted. The parties in IPR2023-01130, -
`
`01134, and -01153 have filed motions for joinder to this IPR. Those motions are
`
`currently pending before the Board.
`
`The Parties submit that none of the above proceedings are cause for the Board
`
`to deny the present Motion as they do not involve both of the present parties and/or
`
`are inapplicable to consideration of a motion to terminate this proceeding.
`
`D. Current Status of Each Such Related Litigation or Proceeding
`with Respect to Each Party in the Litigation or Proceeding
`
`Sections II.B and II.C above indicate the status of each related litigation or
`
`proceeding with respect to each party to the litigation or proceeding.
`
`5
`
`
`
`
`
`
`
`III. AGREEMENT
`
`
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the agreements made
`
`in connection with, or in contemplation of, the termination of the proceeding is in
`
`writing, and Patent Owner is filing true and correct copies of those agreements
`
`concurrently herewith as Exhibits 2001 and 2002. The agreements are being filed
`
`via the Patent Trial and Appeal Board Case Tracking System (PTACTS) system with
`
`access to the “Board only.” The Parties are also filing concurrently herewith a joint
`
`request under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat the agreements
`
`as business confidential information and keep them separate from the files of the
`
`’357 patent. The Parties certify that there are no other agreements, oral or written,
`
`between the Parties made in connection with, or in contemplation of, the termination
`
`of this proceeding.
`
`IV. CONCLUSION
`
`For all these reasons, the Parties respectfully request termination of this
`
`proceeding.
`
`
`
`Date: July 29, 2023
`
`Respectfully submitted,
`
`
`
`/Colin B. Heideman/
`
`Colin B. Heideman
`Reg. No. 61,513
`KNOBBE MARTENS OLSON &
`BEAR, LLP
`
`
`
`/Peter Lambrianakos/
`
`Peter Lambrianakos
`Reg. No. 58,279
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206
`
`6
`
`
`
`925 4th Ave., Ste. 2500
`Seattle, WA 98104
`Tel: 206-405-2000
`Fax: 206-405-2001
`2cbh@knobbe.com
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`South Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`plambrianakos@fabricantllp.com
`
`Counsel for Patent Owner
`
`7
`
`