`January 13, 2017
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`DELL INC.,
`
`Petitioner
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`Patent Owner.
`
`
`
`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
`
`
`
`JOINT MOTION TO TERMINATE THE PROCEEDING
`
`
`
`
`
`
`
`Case IPR2016-01151
`Patent 9,019,838
`I. STATEMENT OF PRECISE RELIEF REQUESTED
`
`Under 35 U.S.C. § 317(a), Petitioner, Dell Inc., 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 Dell is the only Petitioner in this proceeding, the
`
`settlement effectively resolves all disputes, and this entire proceeding should be
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`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
`
`6:15-cv-00639 pending before the United States District Court for the Eastern
`
`District of Texas.
`
`2. On December 6, 2016, the Board instituted an inter partes review on
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`claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69 of the ’838 patent. (Paper 9 at 2.)
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`Patent Owner’s response is due on February 21, 2017. (Paper 10 at 6.)
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`3. On January 12, 2017, the parties reached a settlement that resolves their
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`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
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`settlement agreement as Exhibit 1024 with the designation “Parties and Board
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`
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`1
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`
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`Case IPR2016-01151
`Patent 9,019,838
`Only.”1 Pursuant to the settlement agreement, the parties have agreed to seek
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`termination of this proceeding.
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`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`Termination of this proceeding is proper. The proceeding is in a relatively
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`early stage, Patent Owner has not filed its response, and the Board has not yet
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`decided the merits of this proceeding. As required under 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(b), the parties have provided a true and correct copy of their
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`settlement agreement (Exhibit 1024), and there is no other agreement, oral or
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`written, between the parties made in connection with, or in contemplation of, the
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`termination of this proceeding. This agreement settles all litigation, including this
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`proceeding, between the parties with respect to the ’838 patent. Accordingly, the
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`Board should terminate this proceeding. See Sanofi-Aventis U.S. v. Genentech,
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`Inc., IPR2015-01624, Paper 13 (P.T.A.B. Sep. 2, 2016) (terminating an inter partes
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`review under similar circumstances).
`
`
`
`
`
`
`1 Together with this motion, the parties file a joint motion requesting that the Board
`treat Exhibit 1024 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
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`
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`
`
`Case IPR2016-01151
`Patent 9,019,838
`
`
`January 13, 2017
`
`Respectfully submitted,
`
`
`
`/s/ Gilbert A. Greene
`Gilbert A. Greene (Lead Counsel)
`Reg. No. 48,366
`James G. Warriner (Backup Counsel)
`Reg. No. 72,833
`Stephanie N. DeBrow (Backup Counsel)
`Reg. No. 63,555
`NORTON ROSE FULBRIGHT US LLP
`98 San Jacinto Blvd., Suite 1100
`Austin, Texas 78701
`Tel: 512-474-5201
`Fax: 512-536-4598
`bert.greene@nortonrosefulbright.com
`jim.warriner@nortonrosefulbright.com
`stephanie.debrow@nortonrosefulbright.com
`
`Attorneys for Petitioner Dell
`
`/s/ Justin S. Cohen
`Justin S. Cohen
`Reg. No. 59,964
`Justin.Cohen@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
`214.969.1700
`214.969.1751 (Fax)
`
`Richard W. Hoffmann
`Reg. No. 33,711
`Hoffmann@Reising.com
`REISING ETHINGTON PC
`755 West Big Beaver Road, Suite 1850
`Troy, Michigan 48084
`248.689.3500
`
`
`
`
`
`3
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`
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`248.689.4071 (Fax)
`
`Counsel for Patent Owner Chrimar Systems, Inc.
`
`
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`
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`Case IPR2016-01151
`Patent 9,019,838
`
`
`
`4
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`
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`Case IPR2016-01151
`Patent 9,019,838
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on January 13, 2017 I
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`caused to be served a true and correct copy of the foregoing JOINT MOTION
`
`TO TERMINATE THE PROCEEDING by electronic mail on the following:
`
`
`
`Justin S. Cohen
`THOMPSON & KNIGHT LLP
`Email: Justin.cohen@tklaw.com
`
`Counsel for Patent Owner Chrimar
`Systems, Inc.
`
`
`
`Richard W. Hoffmann
`REISING ETHINGTON PC
`Email: Hoffmann@reising.com
`
`Counsel for Patent Owner Chrimar
`Systems, Inc.
`
`/s/ Gilbert A. Greene
`Gilbert A. Greene
`Reg. No. 48,366
`
`
`
`
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`
`
`5
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