`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HP INC.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`
`
`Inter Partes Review No. 2016-00791
`
`Patent No. 8,678,550
`
`_____________________________________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`IPR2016-00791
`Patent No. 8,678,550
`Petitioner HP Inc. (formerly known as Hewlett-Packard Company) (“HP”)
`
`
`
`and Patent Owner Memjet Technology Limited (collectively, “the Parties”) hereby
`
`jointly request termination of the instant proceeding pursuant to 37 C.F.R. §§
`
`42.5(a), 42.71(a), and 42.72.
`
`The Board authorized the Parties to file this motion in a telephone
`
`conference on July 1, 2016.
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`Termination of this proceeding is proper. As the Office Patent Trial Practice
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`Guide recognizes, “The Board expects that a proceeding will terminate after the
`
`filing of a settlement agreement, unless the Board has already decided the merits of
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`the proceeding.” 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In this case, the
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`parties have settled their disputes relating to U.S. Patent No. 8,678,550 (“the ’550
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`patent”), the review of which forms the basis for this proceeding. The Board has
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`not decided whether to institute Inter Partes Review. As such, termination of the
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`proceeding at this early stage will conserve the Board’s resources. Therefore, it is
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`respectfully submitted that the Board should exercise its authority under 37 C.F.R.
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`§§ 42.5(a), 42.71(a) and 42.72 and terminate this proceeding.
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`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ Settlement is in writing, and a
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`true copy of the Settlement is submitted as Exhibit 1011. The Parties’ are
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`separately moving, pursuant to 37 C.F.R. § 42.74(c), to have the Settlement treated
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`as business confidential information. In the event that a third party submits a
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`1
`
`
`
`IPR2016-00791
`Patent No. 8,678,550
`written request to the Board for a copy of the settlement agreement (Exhibit 1011)
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`along with a purported showing of good cause, due to the highly sensitive nature of
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`the agreement, the Parties would like to be notified of such request and be given
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`the opportunity to respond thereto.
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`In addition to an explanation as to why termination is proper, the Board has,
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`in some instances, required the Parties to identify all parties in any related
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`litigation involving the patent at issue, identify any related proceedings currently
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`before the Office, and discuss the status of each such related litigation or
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`proceeding. See, e.g., IPR2014-00018, Paper 26 at 2 (July 28, 2014). The Parties
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`provide this information below.
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`The ’550 patent was subject of litigation in the Southern District of
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`California, captioned Memjet Technology Limited v. Hewlett-Packard Company,
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`Case No. 3:15-cv-01769-BEN-BLM. The Parties to that action were Memjet
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`Technology Limited, Memjet Ltd., Memjet US Services, Inc., Memjet Holdings
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`Ltd., and HP Inc. (formerly known as Hewlett-Packard Company). That action is
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`also subject of the Parties’ Settlement, and the Parties will soon move the Court to
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`dismiss the action. There are no other pending proceedings between the Parties
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`involving the ’550 patent.
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`The ’550 patent is also subject of IPR2016-00790. In addition, the Parties’
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`Settlement extends to the following United States Patents that are the subject of
`
`2
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`
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`IPR2016-00791
`Patent No. 8,678,550
`
`pending IPR proceedings:
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`1. IPR2016-00537 (7,156,492)
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`2. IPR2016-00873 (7,156,492)
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`3. IPR2016-00746 (6,575,549)
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`4. IPR2016-00752 (6,880,914)
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`5. IPR2016-00839 (8,696,096)
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`6. IPR2016-00867 (8,662,636 )
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`7. IPR2016-00869 (8,662,636)
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`8. IPR2016-00913 (7,325,986)
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`Concurrent with this motion, the Parties are filing motions to terminate in
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`the above-identified proceedings.
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`
`
`3
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`
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`
`
`Date: July 6, 2016
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`
`
`Date: July 6, 2016
`
`
`
`IPR2016-00791
`Patent No. 8,678,550
`Respectfully submitted,
`
`/Dion M. Bregman/
`Dion M. Bregman
`USPTO Reg. No. 45,645
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`Telephone: 650.843.4000
`Fax: 650.843.4001
`Email: dion.bregman@morganlewis.com
`
`Attorneys for Petitioner
`HP INC.
`
`/James M. Glass/
`James M. Glass
`USPTO Reg. No. 46,729
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Ave, 22nd Fl.
`New York, NY 10010
`Telephone: (212) 849-7000
`Fax: (212) 849-7100
`Email: jimglass@quinnemanuel.com
`
`Attorneys for Patent Owner
`MEMJET TECHNOLOGY LIMITED
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2016-00791
`Patent No. 8,678,550
`
`The undersigned hereby certifies that a copy of the foregoing Joint Motion
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`to Terminate Proceeding and the exhibit referred to therein were served on July 6,
`
`2016 by email to:
`
`jimglass@quinnemanuel.com
`
`marckaplan@quinnemanuel.com
`
`johnmckee@quinnemanuel.com
`
`/Dion M. Bregman/
`Dion M. Bregman
`USPTO Reg. No. 45,645
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