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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORP., DELL TECHNOLOGIES INC., and DELL INC.,
`Petitioners,
`
`v.
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`OZMO LICENSING LLC,
`Patent Owner.
`
`
`
`
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`
`
`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
`
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`JOINT MOTION TO TERMINATE PROCEEDING
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`3919397.v1
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`
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, Petitioner Microsoft
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`Corporation (“Microsoft”), Petitioners Dell Technologies Inc. and Dell Inc.
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`(collectively, “Dell,” and together with Microsoft, “Petitioners”), and Patent Owner
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`Ozmo Licensing LLC (“Patent Owner”) (together with Petitioners, “the Parties”),
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`through their respective counsel of record, jointly request termination of this
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`proceeding in view of the Parties’ resolutions of their disputes relating to U.S. Patent
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`No. 8,599,814 (“the ’814 Patent”). The Board authorized the filing of this Joint
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`Motion via email on March 13, 2024.
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`Termination is appropriate in the instant proceeding because the disputes
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`between the Parties have been resolved. The Parties have reached confidential
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`settlements of their disputes with respect to the ’814 Patent, which include
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`agreements to terminate this proceeding, as well as the related district court
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`proceeding involving the Parties. The confidential settlement agreements have been
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`made in writing, and true and correct copies of the settlement agreements are filed
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`concurrently with this Joint Motion as Confidential Exhibits 2001 and 2002 (which
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`are submitted as “Parties and Board Only”), along with a separate Joint Request to
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`Treat as Confidential and Keep Separate, pursuant to 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c). The Parties certify that there are no other collateral agreements or
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`understandings, oral or written, made in connection with, or in contemplation of, the
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`3919397.v1
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`1
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`termination of this proceeding. The Parties request that the settlement agreements be
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`treated as business confidential information, be kept separate from the file of the ’814
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`Patent, and be made available only pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c).
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`Pursuant to 37 C.F.R. §§ 42.5 and 42.72, the Board may terminate a trial
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`without rendering a final written decision, where appropriate, including pursuant to a
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`joint request under 35 U.S.C. § 317(a). See Winplus N. Am., Inc. v. Pilot, Inc.,
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`IPR2018-00488, Paper 12 (PTAB Oct. 24, 2018). “There are strong public policy
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`reasons to favor settlement between the parties to a proceeding.” PTAB Consolidated
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`Trial Practice Guide at 86 (November 2019). Unless the Board has already decided
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`the merits of a proceeding, the “Board expects that a proceeding will terminate after
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`the filing of a settlement agreement.” Id. (emphasis added).
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`This proceeding was instituted on January 16, 2024. Paper 9. Patent Owner has
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`not yet filed its response, which is not due until April 10, 2024. Paper 10 at 11. Oral
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`argument is set for October 17, 2024. Id. As such, the Board has not already decided
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`the merits, making termination appropriate under 35 U.S.C. § 317(a) and 34 C.F.R.
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`§ 42.72. Moreover, the parallel district court litigation involving the Parties has been
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`dismissed pursuant to the Parties’ settlement agreements.
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`Accordingly, for the foregoing reasons, the Parties jointly request termination
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`of this proceeding.
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`3919397.v1
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`2
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`Respectfully submitted this 13th day of March, 2024.
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`
`/Lawrence P. Cogswell III, Ph.D. 71,441/
`Lawrence P. Cogswell III, Ph.D.
`Reg. No. 71,441
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Boulevard
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
`
`Attorney for Patent Owner,
`Ozmo Licensing LLC
`
`/Brian K. Erickson/
`Brian K. Erickson Reg. No. 48,895
`DLA Piper LLP (US)
`303 Colorado, Suite 3000
`Austin, TX 78701
`Phone: 512-457-7059
`Fax: 512-721-2263
`
`Attorney for Petitioners Microsoft
`Corporation, Dell Technologies Inc.,
`and Dell Inc.
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`
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`3919397.v1
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on March 13, 2024, the
`foregoing Joint Motion to Terminate Proceeding and Exhibits referred to herein
`are being served electronically by agreement of the parties at the following email
`addresses:
`
`brian.erickson@dlapiper.com
`chris.katsantonis@us.dlapiper.com
`Ozmo-IPR@us.dlapiper.com
`
`
`
`
`
`
`
`/Lawrence P. Cogswell III, Ph.D. 71,441/
`Lawrence P. Cogswell III, Ph.D.
`Reg. No. 71,441
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Boulevard
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
`
`Attorney for Patent Owner,
`Ozmo Licensing LLC
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`3919397.v1
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`4
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