`From:
`Kenneth Weatherwax
`Sent:
`Wednesday, October 13, 2021 2:27 PM
`To:
`Trials
`Cc:
`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
`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
`
`Attachments:
`
`Subject:
`
`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.
`
`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
`
`1
`
`Polaris Ex. 2021
`1 Kingston v. Polaris, IPR2016-01622, Page 1 of 4
`
`
`
`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.
`
`
`2
`
`Polaris Ex. 2021
`1 Kingston v. Polaris, IPR2016-01622, Page 2 of 4
`
`
`
`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,
`
`
`3
`
`Polaris Ex. 2021
`1 Kingston v. Polaris, IPR2016-01622, Page 3 of 4
`
`
`
`David Hoffman
`Counsel for Kingston
`
`
`
`
`
`
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`*************************
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`and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the
`intended recipient, please contact the sender by reply email and destroy all copies of the original
`message.
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`
`4
`
`Polaris Ex. 2021
`1 Kingston v. Polaris, IPR2016-01622, Page 4 of 4
`
`