`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`AKAMAI TECHNOLOGIES, INC.,
`Petitioner
`v.
`EQUIL IP HOLDINGS LLC,
`Patent Owner
`_____________________
`
`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`_________________
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`Exhibit
`No.
`
`2001
`
`Description
`
`Declaration of Dr. Mark T. Jones in Support of Patent Owner’s
`Preliminary Response
`
`2002
`
`Curriculum Vitae of Dr. Mark T. Jones
`
`2003
`
`Petition Under 37 C.F.R. § 1.324(a) to Correct Inventorship in a
`Patent
`
`2004
`
`Intentionally Left Blank
`
`2005 U.S. Patent No. 8,656,046 to Barger et al.
`
`2006 U.S. Patent No. 6,964,009 to Samaniego et al.
`
`2007
`
`WO 98/43177 (International Publication of PCT/US98/05304) to
`Tso et al.
`
`2008
`
`2010
`
`Redline comparison of specifications of PCT/US98/05304 (Tso
`PCT) and U.S. Patent No. 6,421,733 (Tso)
`2009 U.S. Patent No. 5,902,846 to Feret et al.
`First Amended Complaint for Patent Infringement, 22-677-RGA, Equil
`IP Holdings LLC v. Akamai Technologies, Inc.
`2011 U.S. Patent No. 6,483,851 to Neogi
`Decision Granting Petition to Correct Inventorship Under § 1.324
`for U.S. Patent No. 6,964,009
`2013 Decision on Certificate of Correction for U.S. Patent No 6,964,009
`2014
`Certificate of Correction for U.S. Patent No 6,964,009
`
`2012
`
`2015
`
`Settlement Agreement (CONFIDENTIAL)
`
`- i -
`
`
`
`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`
`I.
`
`
`
`STATEMENT OF RELIEF REQUESTED
`
`Akamai Technologies, Inc. (“Petitioner”), and Equil IP Holdings LLC
`
`(“Patent Owner”) (collectively, “the Parties”) have entered into a confidential
`
`settlement agreement that resolves all underlying disputes between Petitioner and
`
`Patent Owner with respect to U.S. Patent No. 8,495,242 (“the ’242 patent”). A
`
`copy of the Parties’ settlement agreement is being filed with this motion as Exhibit
`
`2015 (the “Agreement”). The Parties are concurrently filing a separate request that
`
`the Agreement be treated as business confidential information and be kept separate
`
`from the files of the involved patent, pursuant to 37 C.F.R. § 42.74(c).
`
`Accordingly, pursuant to 37 C.F.R § 42.74 and the authorization provided by
`
`the Board on October 24, 2023, the Parties jointly request termination of this inter
`
`partes review proceeding in its entirety.
`
`II.
`
`STATEMENT OF FACTS
`
`The Parties entered into a confidential Agreement. See EX2015
`
`(Confidential). Pursuant to the terms of the Agreement, the Parties agreed to jointly
`
`seek termination of this proceeding.
`
`III. ARGUMENT
`
`A. Termination is appropriate.
`
`IPR proceedings “shall be terminated with respect to any petitioner upon the
`
`joint request of the petitioner and the patent owner, unless the Office has decided
`
`- 1 -
`
`
`
`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`the merits of the proceeding before the request for termination is filed.” 35 U.S.C.
`
`§317(a); see also id. (“If no petitioner remains in the inter partes review, the Office
`
`may terminate the review…”). Petitioner and Patent Owner have settled their
`
`dispute regarding the ’242 patent, including both this proceeding and Patent
`
`Owner’s assertion of the ’242 patent in the related district court litigation, Equil IP
`
`Holdings LLC v. Akamai Technologies, Inc., Case No. 1:22-cv-00677 (D. Del.).
`
`The Parties do not anticipate further litigation between them concerning the ’242
`
`patent.1 The Parties are therefore jointly requesting termination of this proceeding.
`
`And the Office has not decided the merits of this IPR. Termination of this IPR is
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`therefore appropriate. See 35 U.S.C. §317(a).
`
`Good cause exists to terminate this proceeding because the Parties have
`
`settled their dispute regarding the ’242 patent. The Board’s Trial Practice Guide
`
`stresses that “[t]here are strong public policy reasons to favor settlement between
`
`the parties to a proceeding.” PTAB November 2019 Consolidated Trial Practice
`
`Guide, at 86. Further, the proceeding is at an early stage. Patent Owner has not yet
`
`filed its Patent Owner Response, and the Office has not decided the merits of the
`
`
`1 Also currently before the Board is an instituted inter partes review of U.S.
`
`Patent No. 6,792,575 (Case No. IPR2023-00329). The Parties are concurrently
`
`filing a motion to terminate that proceeding pursuant to this settlement agreement.
`
`- 2 -
`
`
`
`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`proceeding. Terminating the proceeding now would serve the interests of judicial
`
`economy as well as the mutual interest of the Parties.
`
`B. Written Agreement
`
`The Parties represent that their entire agreement in connection with the
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`termination of this proceeding is embodied in the Agreement, which has been
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`made in writing. 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.
`
`Pursuant to 35 U.S.C. §317(b), a true and correct copy of the Agreement is
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`filed herewith as Exhibit 2015. The Agreement has been filed for access by the
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`“Parties and Board Only” due to the highly sensitive business confidential
`
`information it contains. The Parties desire that the Agreement be maintained as
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`business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. §
`
`42.74(c), and a separate joint request to treat the settlement agreement as business
`
`confidential information is being filed concurrently.
`
`
`
`
`
`- 3 -
`
`
`
`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`
`IV. CONCLUSION
`
`Petitioner and Patent Owner respectfully request that the Board grant the
`
`Parties’ Joint Motion to Terminate this proceeding in its entirety.
`
`Date: October 26, 2023
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`Date: October 25, 2023
`
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`(650) 617-4794
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`/Richard M. Bemben/
`
`Richard M. Bemben
`Registration No. 68,658
`Counsel for Patent Owner
`
`ROPES & GRAY LLP
`
`/s/ James L. Davis, Jr.
`
`James L. Davis, Jr.
`Registration No. 57,325
`Counsel for Petitioner
`
`- 4 -
`
`
`
`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned certifies that true and correct copies of the foregoing
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW and
`
`EXHIBIT 2015 (CONFIDENTIAL) were served in their entireties electronically
`
`via e-mail on October 26, 2023, on the following counsel for Petitioner:
`
`James L. Davis (Lead Counsel)
`Daniel W. Richards (Back-Up Counsel)
`ROPES & GRAY LLP
`james.l.davis@ropesgray.com
`daniel.richards@ropesgray.com
`akamai-equil-ropes-ipr-service@ropesgray.com
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`/Richard M. Bemben/
`
`Richard M. Bemben
`Registration No. 68,658
`Counsel for Patent Owner
`
`Date: October 26, 2023
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`
`
`
`
`
`
`
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