`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HARVEST TRADING GROUP, INC.
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`Patent Owner.
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`JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 U.S.C. § 317(a)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450 Alexandria, VA 22313-1450
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`Case IPR2016-00947
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`Patent 8,962,685
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`Petitioner,
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`v.
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`and
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`INC.
`SYSTEMS,
`VIREO
`UNEMED CORPORATION
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`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
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`authorizing email of September 8, 2016, Petitioner Harvest Trading Group, Inc.
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`(“Petitioner”) and Patent Co-Owner Vireo Systems, Inc. jointly request termination
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`of Inter Partes Review proceeding IPR2016-00947, relating to U.S. Patent No.
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`8,962,685 (“the ‘685 Patent”).
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`The parties have settled their dispute and executed an Asset Purchase
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`Agreement and Settlement Agreement to terminate this proceeding as well as take
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`the necessary steps to dismiss with prejudice the parties’ related litigations in (1)
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`UNeMed Corp. et al. v. Promera Health, LLC et al., 8:15-cv-00135 (D. Neb.); (2)
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`Promera Health, LLC.v. Vireo Sys., Inc. et al., 8:16-cv-00008 (D. Neb.); (3) Vireo
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`Sys., Inc. v. HTG Ventures, LLC, et al., No. 3:14-cv-02359 (M.D. Tenn.) (Appealed
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`6th Cir. Ct. Ap., Case No. 16-5232); (4) Vireo Sys., Inc. v. ProMera Health, LLC,
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`No. 15-156-I (Davidson County, Tenn. Chancery Ct.); (5) Vireo Sys., Inc. et al. v.
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`HTG Ventures, LLC et al., No. SUCV2015-01875BLS2 (Suffolk County, Mass.
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`Superior Ct.); (6) ProMera Health, LLC v. Vireo Sys., Inc., No. 15-12888-NMG (D.
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`Mass); and (7) IPR 2016-00945 (PTAB).
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`The parties’ Asset Purchase Agreement and Settlement Agreement was
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`executed in writing on August 30, 2016, and a complete, true and correct copy is
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`3/317201.2
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`1
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`being filed concurrently herewith as Exhibit 2023 in accordance with 37 C.F.R. §
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`42.74(b).
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`Pursuant to the Board’s authorizing e-mail dated September 8, 2016, the
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`parties jointly request that the Asset Purchase Agreement and Settlement Agreement
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`be treated as business confidential information and be kept separate from the files of
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`the IPR and the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`Petitioner filed its Petition for Inter Partes Review of the ‘685 Patent on April
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`22, 2016. Patent Co-Owner filed a preliminary response on August 3, 2016. The
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`Board has not ruled on whether to institute inter partes review.
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`Termination of this proceeding is proper under 35 U.S.C. § 3l7(a) because the
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`Board has not yet decided the merits of the proceeding. Further, the parties are
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`unaware of any other matter before the USPTO that would be affected by the
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`outcome of this proceeding, and all related litigation has been settled. Termination
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`of a proceeding at such an early stage is appropriate because doing so promotes
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`judicial economy and furthers the policy of the Board. See, e.g., Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Accordingly, the
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`Parties respectfully request termination of this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with the filing to Deposit Account 504293.
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`3/317201.2
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`2
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`Respectfully submitted,
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`/Raymond A. Miller/
`Raymond A. Miller
`Reg. No. 42,891
`Curtis Wadsworth, J.D., Ph.D.
`Reg. No. 57,475
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`PEPPER HAMILTON LLP
`500 Grant St., Suite 5000
`Pittsburgh, PA 15212
`Telephone: (412) 454-5000
`Facsimile: (412) 281-0717
`millerra@pepperlaw.com
`wadsworthc@pepperlaw.com
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`Counsel for Petitioner
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`/Stephen H. Hall/
`Stephen H. Hall, Reg. No. 44,734
`Jacob W. Neu, Reg. No. 67,546
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`BRADLEY ARANT
`BOULT CUMMINGS, LLP
`200 Clinton Avenue West, Suite 900
`Huntsville, AL 35801-4900
`Telephone: (256) 517-5140
`Facsimile: (256) 517-5240
`shall@bradley.com
`jneu@bradley.com
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`Counsel for Patent Co-Owner
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`3/317201.2
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`3
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I, Stephen H. Hall, certify that on this 8th day of
`September, 2016, a copy of this
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`JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 U.S.C. § 317(a)
`
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`was filed with the Patent Trial and Appeal Board via PRPS and served upon the
`following counsel via e-mail pursuant to Petitioner’s consent to e-mail service:
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`millerra@pepperlaw.com
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`Raymond A. Miller
`Curtis Wadsworth, J.D., Ph.D. wadsworthc@pepperlaw.com
`David Magee
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`mageed@pepperlaw.com
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`/Stephen H. Hall/
`Stephen H. Hall, Reg. No. 44,734
`Jacob W. Neu, Reg. No. 67,546
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`BRADLEY ARANT
`BOULT CUMMINGS, LLP
`200 Clinton Avenue West, Suite 900
`Huntsville, AL 35801-4900
`Telephone: (256) 517-5140
`Facsimile: (256) 517-5240
`shall@bradley.com
`jneu@bradley.com
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`3/317201.2
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`4
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