`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`v.
`SOVEREIGN PEAK VENTURES, LLC,
`Patent Owner.
`____________
`
`Case IPR2023-01261
`U.S. Patent No. 8,045,531
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
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`EXHIBIT LIST
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`Description
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`Confidential Settlement and License Agreement (Parties
`
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`Exhibit No.
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`2001
`and Board Only)
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`
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`
`
`ii
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`
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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 HEWLETT PACKARD
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`ENTERPRISE COMPANY and Patent Owner SOVEREIGN PEAK VENTURES,
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`LLC jointly request that this inter partes review proceeding involving U.S. Patent
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`No. 8,045,531 (“the ’531 patent”) be terminated based on a settlement between
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`Petitioner and Patent Owner (“the Parties”) with respect to the ’531 patent.
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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. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,768 (Aug. 14, 2012). The Board authorized filing of the instant motion
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`on October 11, 2023. Guidance as to the content of a motion to terminate is provided
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`in IPR2013-00428, Paper No. 56. There, the Board indicated that a joint motion,
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`such as this one, should (a) include a brief explanation as to why termination is
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`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 (d)
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`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 and is accompanied by the Parties’
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`settlement agreement, as required by 35 U.S.C. § 317(b) and 35 C.F.R. § 42.74 (b).
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`a. Brief Explanation of Why Termination is Appropriate
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`1
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`Termination is appropriate because no patent owner preliminary response or
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`patent owner response has yet been filed, no trial has been instituted, the Board has
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`not decided the merits of the proceeding, and no final written decision has been
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`issued. Under 35 U.S.C. § 317(a), this proceeding “shall be terminated with respect
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`to [] [P]etitioner” because the parties are jointly requesting termination and the
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`Office has not yet “decided the merits of the proceeding before the request for
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`termination is filed.” The Parties have resolved their disputes with respect to the ’531
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`patent. Patent Owner has filed a notice of dismissal of its infringement claim under
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`the ’531 patent in the related proceedings (Sovereign Peak Ventures, LLC v. Hewlett
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`Packard Enterprise Company), and Patent Owner and Petitioner have executed an
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`agreement to request termination of this proceeding and providing a covenant not to
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`sue under the ’531 patent.
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`b. All Parties in Any Pending Related Litigation Involving the Patent at
`Issue
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`The following litigations are related to the ’531 patent:
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`Sovereign Peak Ventures, LLC v. Hewlett Packard Enterprise Company,
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`Civil Action No. 2:23-CV-00009-JRG-RSP (E.D. Tex.).
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`c. Related Proceedings Currently Before the Office
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`The following proceedings are related to the PTAB IPR2023-01261:
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`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC,
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`PTAB-IPR2023-01260.
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`2
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`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC,
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`PTAB-IPR2023-01262.
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`Joint motions to terminate each of the above proceedings are being filed
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`concurrently with this instant motion.
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`d. Current Status of Each Such Related Litigation of 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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`III. SETTLEMENT AGREEMENT
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
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`agreement is in writing, and a true and correct copy is being filed concurrently
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`herewith as Exhibit 2001.1 There are no other agreements, oral or written, between
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`the parties made in connection with, or in contemplation of, the termination of these
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`proceedings. The parties are also filing concurrently herewith a joint request under
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat the settlement agreement as
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`business confidential information and keep it separate from the files of the ’531
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`patent.
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`IV. CONCLUSION
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`1 The settlement agreement is being filed via the PTAB E2E with access to the
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`“Parties and Board only.”
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`3
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`For all these reasons, the Parties respectfully request termination of this
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`proceeding.
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`Dated: October 12, 2023
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`
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`
` / Patrick D. McPherson/ /Tarek N. Fahmi/
`Patrick D. McPherson
` Tarek N. Fahmi
`Reg. No. 46,255
`Reg. No. 41,402
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`DUANE MORRIS LLP
`901 New York Ave., NW
`Ste. 700 East
`Washington, D.C. 20001
`
`Tel: 202.776.5214
`Email:
`PDMcPherson@duanemorris.com
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`Counsel for Petitioner
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`Respectfully submitted,
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`Ascenda Law Group, PC
`2150 N. First Street, Suite 420
`San Jose, CA 95131
`
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`Counsel for Patent Owner
`
`
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`4
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`JOINT MOTION TO TERMINATE PROCEEDINGS
`was served on October 12, 2023, by filing this document though the PTAB P-
`TACTS System as well as by delivering a copy via email directed to the attorneys
`of record for the Petitioner at the following addresses:
`Patrick D. McPherson
`Patrick C. Muldoon
`Matthew S. Yungwirth
`DUANE MORRIS LLP
`901 New York Avenue, NW, Ste. 700 East
`Washington, D.C. 20001
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`Email:
`PDMcPherson@duanemorris.com
`PCMuldoon@duanemorris.com
`MSYungwirth@duanemorris.com
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`The parties have agreed to electronic service in this proceeding.
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`Respectfully submitted,
`Dated: October 12, 2023
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`/Tarek N. Fahmi/
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`Tarek N. Fahmi
`Ascenda Law Group, PC
`
`Reg. No. 41,402
`2150 N First St., Suite 420
`San Jose, CA 95131
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
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