UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC,
`Petitioner
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`v.
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`TIVO INC,
`Patent Owner
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`Case IPR2016-01712
`Patent 6,233,389
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`JOINT MOTION TO DISMISS PETITION
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC,
`Petitioner
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`v.
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`TIVO INC,
`Patent Owner
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`Case IPR2016-01712
`Patent 6,233,389
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`JOINT MOTION TO DISMISS PETITION
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`Case IPR2016-01712
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`The Board authorized the filing of a joint motion to dismiss the Petition in
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`this and other identified IPR cases on January 3, 2017. Previously, Petitioner met
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`and conferred with Patent Owner, and Patent Owner does not oppose this Motion
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`to Dismiss or otherwise object to Petitioner moving to dismiss the Petition and
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`terminate the above-captioned IPR. In fact, Patent Owner joins this motion.
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`Further, all parties agree that Patent Owner will not be prejudiced by the dismissal
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`and that the dismissal will “secure the just, speedy, and inexpensive resolution” to
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`the above-captioned IPR. See 37 C.F.R. § 42.1(b). Petitioner and Patent Owner
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`hereby move for dismissal of the pending Petition and termination of the above-
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`captioned IPR.
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`I. Good Cause Exists To Dismiss The Petition And Terminate The Above-
`Captioned IPR
`Not only is this Motion to Dismiss unopposed, but there are a number of
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`other factors that weigh in favor of dismissing the pending Petition. First, the
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`above-captioned IPR is in its preliminary phase, no preliminary response has been
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`filed, and the Board has yet to reach the merits and issue a decision on institution.
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`In similar circumstances involving IPRs in such an early juncture, the Board has
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`previously granted motions to dismiss using its authority under at least 37 C.F.R.
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`§§ 42.5(a) and 42.71(a). See, e.g., Apple Inc. v. Ericsson Inc., IPR2015-01905,
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`Paper 7, (PTAB January 29, 2016) (granting unopposed motion to dismiss for
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`twelve IPR petitions); Celltrion, Inc. v. Cenetech, Inc., IPR2015-01733, Paper 12,
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`Case IPR2016-01712
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`(PTAB October 6, 2015) (granting unopposed motion to dismiss petition); Under
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`Armour, Inc. v. Adidas AG, IPR2015-01531, Paper 8, (PTAB September 21, 2015)
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`(granting unopposed motion to dismiss petition); Samsung Electronics Co. LTD v.
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`Nvidia Corporation, IPR2015-01270, Paper 11 (PTAB December 9, 2015)
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`(dismissing Petition even over the patent owner’s objection).
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`Second, dismissal of the Petition in the above-captioned IPR will preserve
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`the Board’s resources and the parties’ resources while also epitomizing the Patent
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`Office’s policy of “secur[ing] the just, speedy, and inexpensive resolution” to the
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`above-captioned IPR. See 37 C.F.R. § 42.1(b). Here, the requested dismissal
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`would relieve the Board of the substantial time and resources required to consider
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`the merits, issue an institution decision, and proceed through trial (if instituted).
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`Likewise, even if Petitioner abandons the above-captioned IPR (regardless of
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`whether this Motion to Dismiss is granted), granting this Motion to Dismiss would
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`relieve the Patent Owner of the substantial expense in preparing responses,
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`presenting expert testimony, and participating in an oral hearing. As such, it would
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`be entirely proper for the Board to dismiss the pending Petition “at this early
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`juncture[] to promote efficiency and minimize unnecessary costs.” Samsung,
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`IPR2015-01270, Paper 11 at p. 4.
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`Lastly, dismissal of the Petition and termination of the above-captioned IPR
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`is a just and fair resolution. Again, all parties here agree that Patent Owner will
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`not be prejudiced by the dismissal. Moreover, the parties and the Board will
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`benefit from preserving resources that would otherwise be expended if this Motion
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`Case IPR2016-01712
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`is denied.
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`II. Identification of Parties
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`This IPR petition is related to a lawsuit filed in the Eastern District of Texas
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`(TiVo Inc. v. Samsung Electronics Co., LTD., et al., Civil Action No. 2:15-cv-
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`01503). On January 4, 2017, the parties filed a Stipulation of Dismissal of the
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`lawsuit. All parties involved in the ligation are as follows:
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`TIVO INC.,
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`SAMSUNG ELECTRONICS CO., LTD., and
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`SAMSUNG ELECTRONICS AMERICA, INC.
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`III.
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`Identification and Status of Related Proceedings Before the USPTO
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`The following IPR petitions are related to the current IPR petition and/or the
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`related litigation:
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`Case IPR2016-01524 Patent 6,233,389
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`Case IPR2016-01552 Patent 7,558,472
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`Case IPR2016-01553 Patent 7,558,472
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`Case IPR2016-01554 Patent 8,457,476
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`Case IPR2016-01555 Patent 8,457,476
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`Case IPR2016-01712 Patent 6,233,389
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`Case IPR2016-01712
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`The current status of each of these IPR petitions is “Pending”. Each is prior
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`to institution and prior to any patent owner preliminary response. Motions to
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`dismiss are being filed concurrently with respect to each petition. The parties
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`agree that neither party would be prejudiced by dismissal of this and the related
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`IPR petitions.
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`IV. Request to Keep Separate
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`Petitioner and Patent Owner are jointly submitting a settlement agreement
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`herewith and hereby request that the settlement agreement be treated as business
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`confidential information and kept separate from the files. This request is filed in
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`accordance with 37 CFR § 42.74(c).
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`Case IPR2016-01712
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`V. Conclusion
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`For at least these reasons, Petitioner and Patent Owner jointly and
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`respectfully request that the Board grant this motion to dismiss the pending
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`Petition and terminate the above-captioned IPR.
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`Respectfully submitted,
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` /W. Karl Renner/
` W. Karl Renner, Reg. No 41,265
` Fish & Richardson P.C.
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`/s/ Benjamin Haber
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` Benjamin Haber, Reg. No. 67,129
` Irell & Manella LLP
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`5
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`Date: January 5, 2017
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`Date: January 5, 2017
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`Case IPR2016-01712
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on January 5, 2017, a complete and entire copy of this Joint Motion to Dismiss
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`Petition was provided via email to the Patent Owner by serving the correspondence
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`email address of record as follows:
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`Ben J. Yorks, Esq.
`IRELL & MANELLA LLP
`840 Newport Center Dr., Ste. 400
`Newport Beach, CA 92660
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`Benjamin Haber, Esq.
`Talin Gordnia, Esq.
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Ste. 900
`Los Angeles, CA 90067
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`Email: byorks@irell.com
` bhaber@irell.com
` tgordnia@irell.com
` TiVoIPRs@irell.com
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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