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