UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GAMELOFT, INC.,
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`Petitioner
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`v.
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`INVENTOR HOLDINGS, LLC
`
`Patent Owner
`____________
`
`Case No. IPR2015-01771
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`U.S. Patent No. 8,784,198
`____________
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`____________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GAMELOFT, INC.,
`
`Petitioner
`
`v.
`
`INVENTOR HOLDINGS, LLC
`
`Patent Owner
`____________
`
`Case No. IPR2015-01771
`
`U.S. Patent No. 8,784,198
`____________
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`
`
`
`
`Case IPR2015-01771
`U.S. Patent No. 8,784,198
` Pursuant to the Patent Trial and Appeal Board’s e-mail on October 26, 2015
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`authorizing filing of
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`the present
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`joint motion, Petitioner Gameloft, Inc.
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`(“Petitioner”) and Patent Owner, Inventor Holdings, LLC (“Patent Owner”)
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`(collectively “Parties”) jointly request termination of the present inter partes
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`review proceeding, pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and
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`42.74 (b), on the basis that final judgment has been entered in the district court
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`proceeding.
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`
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`The Parties have reached an agreement resolving the dispute in the above-
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`captioned inter partes review. On September 30, 2015, the district court in the
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`litigation Inventor Holdings, LLC v. Gameloft, Inc., et al. entered a decision
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`finding all claims of the ‘198 Patent invalid under 35 U.S.C. §101. The claims
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`invalidated include all of the claims challenged in this proceeding. Copies of the
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`district court opinion and order entered on September 30, 2015 are attached as
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`Exhibits 1010 and 1011.
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`In addition, Patent Owner has agreed not to appeal the district court
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`judgment. As such, the judgment is final, and the parties agree that the present
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`proceeding is moot and should be terminated because all challenged claims have
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`been found invalid under 35 U.S.C. §101. Also submitted and attached as Exhibit
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`1012 is a stipulation filed in the district court reflecting the Parties’ understanding
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`and agreement that the judgment is final and that Patent Owner will not appeal the
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`decision. Exhibit 1013 is a docket entry reflecting an oral order of the Court
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`
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`Case IPR2015-01771
`U.S. Patent No. 8,784,198
`entering the Parties’ stipulation. The stipulation was filed jointly by the Parties
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`(and unrelated defendants) and endorsed by the district court and sets forth the
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`Parties’ understanding and agreement as required by 35 U.S.C. §317(b).
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`Collectively, the Parties agree that Exhibits 1010-1013 resolve the disputes
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`between them in the above-captioned petition for inter partes review relating to the
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`‘198 Patent. The Parties are aware of no other pending litigation involving the
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`patent at issue.
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`
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`Termination, here, is appropriate as to Petitioner because (1) the dispute with
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`respect to the ‘198 Patent is over, (2) the present proceeding is moot in light of the
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`district court’s order, and (3) the parties have agreed to terminate this proceeding.
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`In addition, Patent Owner has not filed a preliminary response and the Board has
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`not made a decision on institution. See 35 U.S.C. § 317(a). In other words, the
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`Board has not yet decided the merits of this proceeding. Further, Gameloft
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`represents that it will no longer participate even if the Board does not terminate the
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`above-captioned Inter Partes Review. This means that Gameloft will file no
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`further papers, will not conduct any cross examination of any Patent Owner
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`witnesses, and will not be participating in any oral argument.
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`
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`Termination is also appropriate with respect to Patent Owner. The parties
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`are moving jointly that this inter partes review proceeding be terminated with
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`respect to Patent Owner. In addition, (1) the parties have settled all disputes
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`between them as to the patent at issue in this proceeding, (2) this proceeding is in
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`
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`Case IPR2015-01771
`U.S. Patent No. 8,784,198
`its earliest stages as a preliminary response has not been filed, and (3) the merits of
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`the petition have not been considered.
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`
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`Patent Owner represents that all actions pending in the district court have
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`been concluded and no further actions are contemplated as the ‘198 Patent was
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`found unpatentable. Patent Owner is not aware of any other IPR or CBM
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`proceedings involving the ‘198 Patent.
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`For at least the above reasons, the Parties, therefore, jointly and respectfully
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`request that the above-captioned inter partes review be terminated.
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`By:
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`
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`/Eric A. Buresh/
`Eric A. Buresh
`Registration No. 50,394
`Mark C. Lang
`Registration No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`(913) 777-5600
`(913) 777-5601 (Fax)
`Attorneys for Petitioner
`
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`Date: October 27, 2015
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`
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`By: /Tarek N. Fahmi/
`
`
`Tarek N. Fahmi
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`
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`Registration No. 41,402
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`Ascenda Law Group, PC
`333 W. San Carlos St., Suite 200
`San Jose, CA 95110
`
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`Tel: 866-877-4883
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`Fax: 408-773-6177
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`Attorney for Patent Owner
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`CERTIFICATE OF SERVICE
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`
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`
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`The undersigned hereby certifies that the foregoing Joint Motion to
`Terminate Inter Partes Review per 37 C.F.R. § 42.8 was served on October 27,
`2015, to counsel listed below via email:
`
`Tarek N. Fahmi
`Reg. No. 41,402
`Holly J. Atkinson
`Reg. No. 69,934
`Ascenda Law Group, PC
`333 W. San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Fax: 408-773-6177
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`
`
`
`
`
`
`
`By:
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`/Mark C. Lang/
`Mark C. Lang
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