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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
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`MOTOROLA MOBILITY LLC
`Petitioner
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`v.
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`UNILOC 2017 LLC
`Patent Owner
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`__________
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`IPR Case No. IPR2020-00038
`U.S. Patent No. 6,868,079
`__________
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`JOINT MOTION TO TERMINATE
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`1
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`Petitioner Motorola Mobility LLC and Patent Owner Uniloc 2017, LLC
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`jointly request termination of this inter partes review (Case No. IPR2020-00038).
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`In accordance with 37 C.F.R. § 42.20(b), the parties received authorization from the
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`Board to file this motion on October 7, 2020. Termination of this proceeding is
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`proper for several reasons.
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`First, on July 22, 2020, the Board issued its decision invalidating claim 17 of
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`the ’079 patent in IPR2019-00510. Claim 17 of the ’079 patent is the only claim at
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`issue in IPR2020-00038. The deadline for filing a notice of appeal of the Final
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`Written Decision in IPR2019-00510 was September 23, 2020 (which is 63 days after
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`July 22, 2020, per 37 C.F.R. § 90.3(a)(1)). Patent Owner did not file a Notice of
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`Appeal, rendering the Board’s judgement final and claim 17 invalid. On September
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`25, 2020, Petitioner contacted Patent Owner’s counsel to inquire whether Patent
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`Owner would join a motion to terminate this proceeding on the grounds that Patent
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`Owner is not seeking judicial review of the Final Written Decision in IPR2019-
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`00510. On October 2, 2020, Patent Owner informed Petitioner that it agreed to join
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`a motion to terminate this proceeding.
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`Second, the Board has not yet “decided the merits of the proceeding before
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`the request for termination is filed.” 77 Fed. Reg. 48680, 48686 (Aug. 14, 2012)
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`(37 C.F.R. § 317(a) provides that “[a]n inter partes review instituted under this
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`2
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.”) The Board has not yet
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`rendered its Final Written Decision in this inter partes review. Indeed, briefing is
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`not yet completed in this matter and there are no outstanding motions in this
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`proceeding. No other party’s rights will be prejudiced by the termination of this
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`inter partes review. No public interest or other factors weigh against termination
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`of this proceeding.
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`Third, terminating this proceeding pursuant to this Joint Motion serves the
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`interests of all parties involved, as well as the Board, in preserving limited
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`resources that would otherwise be expended in determining validity of an already
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`invalidated claim of the ’079 patent. Pursuant to 37 C.F.R. §§ 42.71(a), 42.72, the
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`Board is authorized to terminate proceedings under these circumstances. See 37
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`C.F.R. §§ 42.71(a), 42.72 (authorizing the Board to dismiss a petition).
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`Accordingly, both Petitioner and Patent owner jointly request that the Board
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`terminate this proceeding. In the alternative, if the Board in its discretion denies
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`this Motion to Terminate, the parties have conferred and reached agreement
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`regarding modification of due dates and have stipulated in a separate filing (filed
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`on even date herewith) the following adjustments to the schedule in the event this
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`Motion to Terminate is denied:
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`3
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`DUE DATE 2
`(Petitioner’s Reply to
`Patent Owner’s Response
`to Petition)
`DUE DATE 3 (Patent
`Owner’s sur-reply)
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`Current Date
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`New Agreed Date
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`October 7, 2020
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`October 16, 2020
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`November 12, 2020
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`December 11, 2020
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`October 7, 2020
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`Respectfully submitted,
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`/s/ Martin R. Bader
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`Martin R. Bader (Reg. No. 54,736)
`SHEPPARD MULLIN RICHTER &
`HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Tel.: (858) 720-8900
`Fax: (858) 509-3691
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`Counsel for Petitioner
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
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`October 7, 2020, this Joint Motion to Terminate was served via electronic service on
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`the following counsel of record for Patent Owner:
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`Patent Owner’s Lead and Back-up Counsel
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`Lead
`Counsel
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`Back-up
`Counsel
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`Back-up
`Counsel
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`Back-up
`Counsel
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`Ryan Loveless (Reg. No. 51,970)
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`ryan@etheridgelaw.com
`972-292-8303
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`Brett Mangrum (Reg. No. 64,783)
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`brett@etheridgelaw.com
`469-401-2659
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`James Etheridge (Reg. No. 37,614)
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste.120-324
`Southlake, TX 76092
`jim@etheridgelaw.com
`817-470-7249
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`Jeffrey Huang (Reg. No. 68,639)
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste.120-324
`Southlake, TX 76092
`jeff@etheridgelaw.com
`972-292-8303
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`Dated: October 7, 2020
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`Respectfully submitted,
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`/s/ Martin R. Bader
`Martin R. Bader (Reg. No. 54,736)
`SHEPPARD MULLIN RICHTER &
`HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Tel.: (858) 720-8900
`Fax: (858) 509-3691
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`Counsel for Petitioner
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`ii
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