`Filed November 3, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`AMX, LLC,
`Petitioner,
`
`v.
`
`ChriMar Systems, Inc.,
`Patent Owner.
`
`
`
`Case IPR2016-00573
`Patent 9,019,838 B2
`
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`JOINT MOTION TO TERMINATE THE PROCEEDING
`
`
`
`
`
`
`
`Case IPR2016-00573
`Patent 9,019,838 B2
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`
`
`Under 35 U.S.C. § 317(a), Petitioner, AMX, LLC, and Patent Owner, ChriMar
`
`Systems, Inc., jointly request that the Board terminate this proceeding. The parties
`
`have reached a settlement that resolves their dispute concerning the patent at issue in
`
`this proceeding. Given that AMX is the only Petitioner in this proceeding, the
`
`settlement effectively resolves all disputes, and this entire proceeding should be
`
`dismissed as to both Petitioner and Patent Owner.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`
`
`1.
`
`U.S. Patent No. 9,019,838 (“the 838 patent”) is the subject of this
`
`proceeding and is one of four patents asserted against Petitioner in Civil Action
`
`6:2015-cv-00164 pending before the United States District Court for the Eastern
`
`District of Texas.
`
`2.
`
`On August 10, 2016, the Board instituted an inter partes review on claims
`
`1, 2, 7, 26, 29, 38, 40, 47, 55, and 69 of the 838 patent. (Paper 18 at 12.) Patent
`
`Owner’s response is due November 22, 2016. (Paper 22 at 1.)
`
`3.
`
`On November 2, 2016, the parties reached a settlement that resolves
`
`their dispute with respect to several patents, including the 838 patent. In accordance
`
`with 37 C.F.R. § 42.74(b), the parties submit a true and correct copy of the settlement
`
`agreement as Exhibit 1041 with the designation “Parties and Board Only.”1 Pursuant
`
`
`1 Together with this motion, the parties file a joint motion requesting that the Board
`
`1
`
`
`
`Case IPR2016-00573
`Patent 9,019,838 B2
`
`to the settlement agreement, the parties have agreed to seek termination of this
`
`proceeding.
`
`II.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`Termination of this proceeding is proper. The proceeding is in a relatively early
`
`stage, Patent Owner has yet to file a response, and the Board has not yet decided the
`
`merits of this proceeding. As required under 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(b), the parties have provided a true and correct copy of their settlement
`
`agreement (Exhibit 1041), and there is no other agreement, oral or written, between
`
`the parties made in connection with, or in contemplation of, the termination of this
`
`proceeding. This agreement settles all litigation, including this proceeding, between
`
`the parties with respect to the 838 patent. Accordingly, the Board should terminate
`
`this proceeding. See Sanofi-Aventis U.S. v. Genentech, Inc., IPR2015-01624, Paper 13
`
`(P.T.A.B. Sep. 2, 2016) (terminating an inter partes review under similar circumstances).
`
`
`
`
`
`
`treat Exhibit 1041 as business confidential information, keep it separate from the files
`of the involved patent, and make it available only to the entities and under the
`conditions identified in 37 C.F.R. § 42.74(c).
`
`2
`
`
`
`Respectfully submitted,
`/Brent A. Hawkins/
`Brent A. Hawkins (Reg. 44,146)
`Attorney for Petitioner
`
`/Justin S. Cohen/
`Justin S. Cohen (Reg. 59,964)
`
`Attorney for Patent Owner
`
`Case IPR2016-00573
`Patent 9,019,838 B2
`
`November 3, 2016
`
`
`
`3
`
`
`
`Case IPR2016-00573
`Patent 9,019,838 B2
`
`
`CERTIFICATE OF SERVICE
`
`I certify that I sent a copy of the foregoing JOINT MOTION TO TERMINATE THE
`
`PROCEEDING on November 3, 2016 by electronic mail to the attorneys of record for
`
`the Patent Owner at the following e-mail addresses:
`
`justin.cohen@tklaw.com
`
`hoffmann@reising.com
`
`
`
`/Hersh H. Mehta/
`Hersh H. Mehta (Reg. 62,336)
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