UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`Apple Inc.
`Petitioner
`
`v.
`
`Ancora Technologies Inc.
`Patent Owner
`
`_______________
`
`Case CBM2016-00023
`Patent 6,411,941
`_______________
`
`
`
`JOINT MOTION TO TERMINATE WITH
`REQUEST TO KEEP SEPARATE
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`dn-180238
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`Apple Inc.
`Petitioner
`
`v.
`
`Ancora Technologies Inc.
`Patent Owner
`
`_______________
`
`Case CBM2016-00023
`Patent 6,411,941
`_______________
`
`
`
`JOINT MOTION TO TERMINATE WITH
`REQUEST TO KEEP SEPARATE
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`dn-180238
`
`
`
`I.
`
`
`
`INTRODUCTION AND STATEMENT OF REQUESTED RELIEF
`
`On April 25, 2016, the Board authorized the parties to jointly file a Motion
`
`to Terminate a covered business method (CBM) proceeding pending between the
`
`parties. Accordingly, Petitioner Apple Inc. (“Petitioner”) and Patent Owner
`
`Ancora Technologies, Inc. (“Patent Owner”) jointly move to terminate the above-
`
`captioned proceeding in view of the parties’ agreement to settle their disputes.
`
`Included with this Motion is a copy of the agreement that settled all claims
`
`between the parties. The parties also jointly request that the agreement be kept
`
`separate pursuant to 37 CFR § 42.74(c). As explained below, the parties
`
`respectfully submit that there is good cause for granting the motion to terminate
`
`and the request to keep separate.
`
`II. BACKROUND AND RELEVANT FACTS
`
`
`
`On January 8, 2016, Petitioner filed a petition requesting CBM review of
`
`U.S. Patent No. 6,411,941 (the “Petition”). Patent Owner did not file a preliminary
`
`response. The Petition is currently pending before the Board for a decision on
`
`institution.
`
`On April 13, 2016, the parties agreed to settle their respective claims against
`
`each other in a SETTLEMENT AND LICENSE AGREEMENT (“the
`
`dn-180238
`
`1
`
`
`
`Agreement”) executed by the parties. A copy of the Agreement1 is submitted
`
`herewith as Exhibit 1030. Pursuant to the terms of the Agreement, the parties have
`
`now dismissed all previously pending matters with the exception of this pending
`
`CBM proceeding.
`
`
`
`The dismissed matters are listed below:
`
`• Ancora Techs., Inc. v. Apple, Inc., No. 4:11-cv-6357 (N.D. Cal.)
`
`(“Ancora I”), filed December 15, 2011; and
`
`• Ancora Techs., Inc. v. Apple, Inc., No. 4:15-cv-3659 (N.D. Cal.)
`
`(“Ancora II”), filed August 11, 2015.
`
`III. LEGAL STANDARD
`
`
`
`Pursuant to 37 C.F.R. § 42.20(c), the moving party has the burden to
`
`establish that it is entitled to the requested relief. As explained below, good cause
`
`exists for granting this motion, and the parties respectfully submit that they have
`
`carried their burden to establish that they are entitled to the relief sought herein.
`
`
`1 Pursuant to 37 CFR § 42.74(c), the parties jointly request that the Agreement
`
`filed as Exhibit 1030 be treated as business confidential information and kept
`
`separate from the files of the subject patent.
`
`dn-180238
`
`2
`
`
`
`IV. GOOD CAUSE EXISTS FOR GRANTING THIS MOTION TO
`TERMINATE
`
`
`
`This proceeding should be terminated because the parties have resolved their
`
`pending disputes and have agreed to refrain, to the extent permitted by law, from
`
`further participation in this proceeding. See Ex. 1030 at § 2.5.2. This proceeding
`
`also should be terminated because it is at its earliest stages before the Board has
`
`decided whether to institute the proceeding. Finally, judicial economy will be
`
`served by terminating this proceeding, as the Board will no longer be required to
`
`expend resources in deciding the issues raised in the Petition.
`
`V. TREAT SETTLEMENT AGREEMENTS AS BUSINESS
`CONFIDENTIAL INFORMATION
`
`Patent Owner and Petitioner hereby request that the settlement agreement
`
`(Exhibit 1030) be treated as business confidential information, be kept separate
`
`from the file of this CBM, and be made available only to Federal Government
`
`agencies on written request, or to any person on a showing of good cause pursuant
`
`to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c). The parties’ request is consistent
`
`with the standards set forth in 35 U.S.C. § 327, which govern settlement of
`
`instituted reviews.
`
`dn-180238
`
`3
`
`
`
`VI. CONCLUSION
`
`
`
`Because the parties have demonstrated that good cause exists for granting
`
`this Motion, the parties respectfully request that the Board grant this Motion to
`
`Terminate with Request to Keep Separate.
`
`
`
`Dated: April 25, 2016
`
`Respectfully submitted,
`
`
`
`By /Diek Van Nort/
`Diek Van Nort
`Counsel for Petitioner
`dvannort@mofo.com
`Registration No. 60,777
`MORRISON & FOERSTER LLP
`370 17th St., 42nd Floor
`Denver, CO, 80202
`Tel: (650) 813-5696
`
`
`
`
`By /Marc Lorelli/
`John P. Rondini (Reg. No. 64,949)
`John S. LeRoy (Reg. No. 48,158)
`Mark A. Cantor (Reg. No. 30,614)
`Marc Lorelli (Reg. No. 43,759)
`Mark A. Jotanovic (Reg. No. 70,664)
`Counsel for Patent Owner
`Registration No 43,759
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`dn-180238
`
`4
`
`
`
`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
`
`A copy of this JOINT MOTION TO TERMINATE WITH REQUEST TO
`
`KEEP SEPARATE and supporting materials have been served on Patent Owner,
`
`Ancora Technologies, Inc. via e-mail on this day of April 25, 2016:
`
`John P. Rondini
`John S. LeRoy
`Mark A. Cantor
`Marc Lorelli
`Mark A. Jotanovic
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`ANCC0112CBMR1@brookskushman.com
`
`
`/Diek Van Nort/
`Diek Van Nort
`
`
`
`
`
`
`Dated: April 25, 2016
`
`
`
`
`dn-180238
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