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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`WORLD PROGRAMMING LIMITED,
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`Petitioner,
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`v.
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`SAS INSTITUTE, INC.,
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`Patent Owner.
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`––––––––––
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`Case No. IPR2019-01458
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`U.S. Patent 7,170,519
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`––––––––––
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`PETITIONER’S UNOPPOSED MOTION TO DISMISS THE PETITION
`AND TERMINATE THE PROCEEDING BEFORE INSTITUTION
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`IPR2019-01458
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`I.
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`INTRODUCTION
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`On December 9, 2019, the Board authorized Petitioner World Programming
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`Limited to file a motion to dismiss its petition for inter partes review and terminate
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`the proceeding. This proceeding is in its preliminary phase. Patent Owner SAS
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`Institute has filed a Preliminary Response but the Board has yet to reach the merits
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`and issue a decision on institution. World Programming requests that the Board to
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`dismiss its petition and terminate IPR2019-01458 to preserve the Board’s and
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`parties’ resources and to achieve a just, speedy, and inexpensive resolution to this
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`dispute that does not cause prejudice to SAS Institute. SAS Institute does not
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`oppose this motion.
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`II.
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`PROCEDURAL HISTORY
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`The petition for inter partes review was filed on August 5, 2019. This
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`proceeding is related to a district court action entitled SAS Institute Inc. v. World
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`Programming Limited, et al., which is pending in the United States District Court
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`for the Eastern District of Texas and is assigned Case No. 2:18-cv-00295. The
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`patent at issue in this proceeding is one of four patents currently asserted against
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`World Programming. The district court action is set for a jury trial in August 2020.
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`III. ARGUMENT
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`Good cause exists to dismiss World Programming’s petition for inter partes
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`review and terminate this proceeding. Termination will preserve the Board’s and
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`IPR2019-01458
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`the parties’ resources, and would expeditiously resolve World Programming’s
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`request, furthering the purpose of IPR challenges. 37 C.F.R. § 42.1(b). This
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`proceeding is in its preliminary stage as the Board has not yet reached the merits
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`and issue a decision on institution. SAS Institute does not oppose termination and
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`will not be prejudiced by termination.
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`The Board “may terminate a trial without rendering a final written decision,
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`where appropriate...” 37 C.F.R. § 42.72. The Rules governing IPR proceedings
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`“shall be construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” 37 C.F.R. § 42.1(b). In determining whether a termination request is
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`“appropriate,” the Board has looked primarily to the stage of the proceedings when
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`a request is made, and has repeatedly granted pre-institution termination. See, e.g.,
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`IPR2014-00905, Paper 7 at 1 (Aug. 26, 2014) (granting unopposed motion to
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`terminate stating that a “decision on the Petition … has not yet been rendered.
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`Under these circumstances, we determine that it is appropriate … to terminate this
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`proceeding without rendering a final written decision.”)
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`The Board has repeatedly stated in other decisions that the stage of the
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`proceeding is the most relevant factor to be considered in addressing a termination
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`request. Cf. IPR2013-00016, Paper 31 at 3 (Dec. 11, 2013) (holding that “in view
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`of the advanced stage of this proceeding, rather than terminate this proceeding, the
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`Board will proceed to a final written decision” despite the joint nature of the
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`IPR2019-01458
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`motion); IPR2015-00035, Paper 30 at 4 (June 25, 2015) (“The instant proceeding
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`is not in a preliminary stage; we issued a decision instituting inter partes review
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`[two months prior].”). This proceeding is in its preliminary stage and termination
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`is proper.
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`The Board should grant World Programming’s motion. Such termination
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`will further the purpose of the rules by expeditiously resolving this dispute without
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`subjecting the Board and the parties to unnecessary expense involved in taking
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`IPR2019-01458 through trial. The parties will incur substantial expense in
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`preparing and presenting expert declarants for deposition, submitting substantive
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`briefs and motions, and presenting at an oral hearing. Because of the procedural
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`posture of the district court action, it is unlikely that a final written decision will
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`issue in this proceeding before the district court action is tried to a jury, and
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`therefore the parties are likely to incur duplicative expenses litigating the same or
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`similar invalidity issues in this proceeding and in the district court. Therefore,
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`World Programming submits that it is more efficient to focus its limited resources
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`on the district court action and termination will not prejudice SAS Institute.
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`In addition, the Board will also have to expend substantial resources if it
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`were to decline to terminate IPR2019-01458. It will likely be requested to address
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`various procedural disputes, address potential requests for additional discovery,
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`preside over an oral hearing, and draft a substantive decision on institution and a
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`IPR2019-01458
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`final written decision on the merits. All of these resources can be spared by
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`terminating IPR2019-01458. Termination will reduce the overall burden of this
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`dispute on the Board. Thus, termination will secure the “the just, speedy, and
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`inexpensive resolution” of the proceeding without prejudice to SAS Institute, and
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`SAS Institute does not oppose the Board terminating IPR2019-01458.
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`IV. CONCLUSION
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`The Board should dismiss World Programming’s petition and terminate
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`IPR2019-01458.
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`Date: December 16, 2019
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` /s/ Harper Batts
`Harper Batts (Reg. No. 56,160)
`hbatts@sheppardmullin.com
`Chris Ponder (Reg. No. 77,167)
`cponder@sheppardmullin.com
`Sheppard Mullin Richter & Hampton LLP
`379 Lytton Avenue
`Palo Alto, CA 94301
`T: (650) 815-2600
`F: (650) 815-2601
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`Counsel for Petitioner
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`IPR2019-01458
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on December 16, 2019, a complete copy
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`of the foregoing Petitioner’s Unopposed Motion to Dismiss the Petition and Terminate
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`the Proceeding Before Institution was served via email to all parties to this proceeding
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`at the addresses indicated:
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`FOR PATENT OWNER:
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`David B. Cochran (Reg. No. 39,142)
`dcochran@jonesday.com
`Joseph M. Sauer (Reg. No. 47,919)
`jmsauer@jonesday.com
`Joshua Nightingale (Reg. No. 67,865)
`jrnightingale@jonesday.com
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`Brenton R. Babcock (Reg. No. 39,592)
`brent.babcock@wbd-us.com
`Joshua P. Davis (Reg. No. 72,524)
`joshua.p.davis@wbd-us.com
`Tony Chen (Reg. No. 67,414)
`tony.chen@wbd-us.com
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`Date: December 16, 2019
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` /Harper Batts/
`Harper Batts (Reg. No. 56,160)
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