From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Kenneth Weatherwax
`Trials
`Nathan Lowenstein; azra@tensegritylawgroup.com; Michael Ballanco; chrisyang@sjclawpc.com;
`mhopkins@sjclawpc.com; David Hoffman
`RE: Request to Withdraw: IPR2016-01621, IPR2016-01622, IPR2017-00116 - Request to file motion to terminate
`Wednesday, October 13, 2021 5:27:33 PM
`2021-09-22 Polaris v. Kingston 19-1202 CAFC Order remanding case.pdf
`18-1831 2021-09-22 CAFC Order remanding case.pdf
`18-1768 2021-09-17 CAFC Order remanding.pdf
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Honorable Board:
`
`Patent Owner Uniloc 2017 and Petitioner Kingston Technology have reached an agreement to settle
`their disputes in connection with IPR2016-01621, IPR2016-01622 and IPR2017-00116. The appeals
`of the Board decisions in these cases have now been remanded to the Board for the limited purpose
`of allowing the parties to seek further action by the Director. On behalf of Patent Owner, and in
`agreement with Petitioner, we would like to request authorization by the Board on behalf of the
`Director to file in each of these proceedings a Motion to Terminate under 35 U.S.C. § 317, along with
`filing of a copy of the settlement agreement and a Joint Request that the settlement agreement be
`treated as business confidential information and kept separate pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74.
`
`35 U.S.C. § 317(a) provides that “[a]n inter partes review instituted under this chapter shall be
`terminated with respect to any petitioner upon the joint request of the petitioner and the patent
`owner, unless the Office has decided the merits of the proceeding before the request for
`termination is filed,” and that “[i]f no petitioner remains in the inter partes review, the Office may
`terminate the review or proceed to a final written decision under section 318(a).” Before United
`States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), the Board’s final written decision under 35 U.S.C.
`§ 318(a) in an IPR was, per the text of the AIA, deemed the Office’s final decision. In Arthrex the
`Supreme Court held that in IPR, Board APJs “lack[] the power under the Constitution to finally
`resolve the matter within the Executive Branch” and only the Director “may issue a final decision” of
`the Office. 141 S. Ct. at 1985, 1987. Accordingly, Arthrex establishes it is unconstitutional for the
`Board’s final written decision under § 318(a), without more, to constitute the Office’s final
`determination deciding the merits under the AIA. Therefore, the Office now offers Director review
`of the Board’s decisions in IPR pursuant to Arthrex. Here, the time to seek Arthrex review has not
`expired in these cases. Accordingly, Patent Owner submits that the Office has not yet finally decided
`the merits and the Director may terminate these reviews without a final decision of the Office under
`§ 317(a) upon the joint request of petitioner and patent owner. Authorization of a Motion to
`Terminate is therefore respectfully requested.
`
`Copies of the Court’s remand orders are attached. The parties can make themselves available for a
`conference call should one be deemed helpful.
`
`IPR2016-01621
`Ex. 3002
`
`

`

`Respectfully submitted,
`
`Lead Counsel for Patent Owner
`
`Kenneth Weatherwax | Lowenstein & Weatherwax LLP
`1880 Century Park East, Suite 815
`Los Angeles, California 90067
`Mobile: 310.936.3088
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, July 22, 2021 1:32 PM
`To: Kenneth Weatherwax <weatherwax@lowensteinweatherwax.com>
`Cc: Nathan Lowenstein <lowenstein@lowensteinweatherwax.com>; azra@tensegritylawgroup.com;
`Michael Ballanco <ballanco@fr.com>; chrisyang@sjclawpc.com <cyang@sjclawpc.com>;
`mhopkins@sjclawpc.com; David Hoffman <Hoffman@fr.com>
`Subject: RE: Request to Withdraw: IPR2016-01621, IPR2016-01622, IPR2017-00116 - Request to file
`motion to terminate
`
`Counsel,
`
`Thank you for your email. Because these cases are currently pending at the Federal Circuit,
`we await action from the Federal Circuit before considering Patent Owner’s request.
`
`Re3gards,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Kenneth Weatherwax <weatherwax@lowensteinweatherwax.com>
`Sent: Thursday, July 15, 2021 10:05 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Nathan Lowenstein <lowenstein@lowensteinweatherwax.com>; azra@tensegritylawgroup.com;
`Michael Ballanco <ballanco@fr.com>; chrisyang@sjclawpc.com <cyang@sjclawpc.com>;
`mhopkins@sjclawpc.com; David Hoffman <Hoffman@fr.com>
`Subject: RE: Request to Withdraw: IPR2016-01621, IPR2016-01622, IPR2017-00116 - Request to file
`motion to terminate
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Trials,
`
`

`

`On June 28, 2021, the above-captioned cases were vacated and remanded by the Supreme Court
`(No. 19-1459) for further proceedings in light of United States v. Arthrex, 594 U.S. ___ (2021).
`
`Petitioner (Kingston) and Patent Owner (Polaris) have reached an agreement to settle these cases,
`and Patent Owner is the only party still participating in these cases. On September 3, 2020 and
`September 18, 2020, Petitioner sent the Office the emails below regarding Petitioner’s withdrawal.
`
`In light of the settlement and Petitioner’s abandonment of these contests, Patent Owner requests
`authorization to file a motion to terminate these cases prior to final Office decision, and to withdraw
`its motions to amend and for rehearing (in IPR2016-01622) contingent upon such termination.
`Patent Owner observes that the Office has authorized and granted such termination motions in
`other such cases. E.g., IPR2017-01797, Paper 39 (July 21, 2020) (per curiam) (terminating case on
`Arthrex remand due to settlement); IPR2017-01798 (same); IPR2017-01799 (same); IPR2017-01800
`(same); IPR2017-01801 (same); IPR2017-01802 (same).
`
`The proposed motion to terminate would be filed with a copy of the settlement agreement and a
`request that the settlement agreement be treated as business confidential information and kept
`separate pursuant to 35 U.S.C. § 317.
`
`Patent Owner, the only remaining party participating in these proceedings, is available for a
`conference if a conference is deemed helpful.
`
`Respectfully submitted,
`
`Kenneth Weatherwax
`Lead Counsel for Patent Owner
`
`Kenneth Weatherwax | Lowenstein & Weatherwax LLP
`1880 Century Park East, Suite 815
`Los Angeles, California 90067
`Office: 310.307.4503
`
`From: David Hoffman [mailto:Hoffman@fr.com]
`Sent: Friday, September 18, 2020 10:43 AM
`To: trials@uspto.gov
`Cc: Nathan Lowenstein; Kenneth Weatherwax; azra@tensegritylawgroup.com; Michael Ballanco;
`chrisyang@sjclawpc.com; mhopkins@sjclawpc.com
`Subject: RE: Request to Withdraw: IPR2016-01621, IPR2016-01622, IPR2017-00116
`
`
`
`Members of the Board,
`
`Kingston respectfully requests a confirmation that it has been withdrawn from the proceedings
`listed above. If an additional filing is required, can the Board grant permission for Kingston to make
`those filings?
`
`
`

`

`Thank you,
`
`David Hoffman
`Counsel for Kingston
`
`From: David Hoffman
`Sent: Thursday, September 3, 2020 3:24 PM
`To: 'trials@uspto.gov' <trials@uspto.gov>
`Cc: 'lowenstein@lowensteinweatherwax.com' <lowenstein@lowensteinweatherwax.com>; 'Kenneth
`Weatherwax' <weatherwax@lowensteinweatherwax.com>; 'azra@tensegritylawgroup.com'
`<azra@tensegritylawgroup.com>; Michael Ballanco <ballanco@fr.com>; chrisyang@sjclawpc.com
`<cyang@sjclawpc.com>; Martha Hopkins <mhopkins@sjclawpc.com>
`Subject: Request to Withdraw: IPR2016-01621, IPR2016-01622, IPR2017-00116
`
`Members of the Board,
`
`Petitioner Kingston asks the Board’s permission to withdraw from the above-listed IPR proceedings.
`Kingston understands that this request will be interpreted by the Board as an abandonment of the
`contest under 37 C.F.R. 42.73(b)(4).
`
`Please let me know if any additional filings are necessary to effect Kingston’s withdrawal. Counsel
`for Patent Owner is copied on this email.
`
`Thank you,
`
`David Hoffman
`Counsel for Kingston
`
`
`
`
`
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