PGR2020-00067
`Joint Motion to Terminate
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No. 50,784
`BRIAN M. HOFFMAN, Reg. No. 39,713
`MICHAEL J. SACKSTEDER (pro hac vice)
`KEVIN X. McGANN, Reg. No. 48,793
`GREGORY A. HOPEWELL, Reg. No. 66,012
`GEOFFREY R. MILLER (pro hac vice)
`ERIC Y. ZHOU, Reg. No. 68,842
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case No. PGR2020-00067
`U.S. Patent No. 10,398,978 B2
`_____________
`
`PETITIONER AND PATENT OWNER’S JOINT MOTION
`TO TERMINATE POST GRANT REVIEW
`PROCEEDINGS PURSUANT TO 35 U.S.C. § 317 (A)
`
`
`
`Joint Motion to Terminate
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No. 50,784
`BRIAN M. HOFFMAN, Reg. No. 39,713
`MICHAEL J. SACKSTEDER (pro hac vice)
`KEVIN X. McGANN, Reg. No. 48,793
`GREGORY A. HOPEWELL, Reg. No. 66,012
`GEOFFREY R. MILLER (pro hac vice)
`ERIC Y. ZHOU, Reg. No. 68,842
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case No. PGR2020-00067
`U.S. Patent No. 10,398,978 B2
`_____________
`
`PETITIONER AND PATENT OWNER’S JOINT MOTION
`TO TERMINATE POST GRANT REVIEW
`PROCEEDINGS PURSUANT TO 35 U.S.C. § 317 (A)
`
`
`
`
`PGR2020-00067
`Joint Motion to Terminate
`
`
`Pursuant to 35 U.S.C. § 317(a), § 327(a), and 37 C.F.R. § 42.72, Petitioner
`
`Supercell Oy (“Petitioner”) and GREE, Inc. (“Patent Owner”) (collectively “the
`
`Parties”) hereby provide notice that they have reached a settlement agreement and
`
`jointly request termination of the following inter partes and post grant reviews:
`
`1. IPR2020-00310 challenging U.S. Patent No. 10,286,302 (the ’302
`
`patent);
`
`2. IPR2020-00893 challenging U.S. Patent No. 10,279,262 (the ’262
`
`patent);
`
`3. IPR2020-00993 challenging U.S. Patent No. 10,286,318 (the ’318
`
`patent);
`
`4. PGR2020-00042 challenging U.S. Patent No. 10,307,678 (the ’678
`
`patent);
`
`5. PGR2020-00052 challenging U.S. Patent No. 10,335,682 (the ’682
`
`patent); and
`
`6. PGR2020-00067 challenging U.S. Patent No. 10,398,978 (the ’978
`
`patent).
`
`Because none of these IPRs or PGRs (collectively, “Patents at Issue”) have been
`
`joined, this motion has been filed under separate caption in each proceeding.
`
`1
`
`
`
`PGR2020-00067
`Joint Motion to Terminate
`
`I.
`Termination Is Appropriate
`Termination of each proceeding is proper. The parties have executed
`
`stipulated dismissals regarding the Patents at Issue, a respective true copy of which
`
`is filed herewith. The Board has not yet reached institution decisions regarding the
`
`proceedings, except for one proceeding in which institution was denied as noted
`
`below. No motions are outstanding in these proceedings and no other party’s
`
`rights will be prejudiced by the terminations of these proceedings.
`
`The parties are jointly requesting termination, and the parties do not
`
`contemplate any litigation or proceeding involving the Patents at Issue in the
`
`foreseeable future. Nor are the Patents at Issue subject of any other PTAB
`
`proceedings.
`
`The status of the respective Patents at Issue is as follows:
`A. The ’302 Patent (IPR2020-00310)
`The Petition concerning the ’302 patent was afforded a filing date of
`
`December 17, 2019. On June 18, 2020, the Board entered its Decision Denying
`
`Institution of Inter Partes Review of the ’302 patent. Petitioner filed a Request for
`
`Rehearing which is pending.
`B.
`The ’262 Patent (IPR2020-00893)
`The Petition concerning the ’262 patent was afforded a filing date of
`
`May 13, 2020. The Board has not made an institution decision.
`
`2
`
`
`
`PGR2020-00067
`Joint Motion to Terminate
`
`C. The ’318 Patent (IPR2020-00993)
`The Petition concerning the ’318 patent was afforded a filing date of
`
`June 10, 2020. The Board has not made an institution decision.
`D. The ’678 Patent (PGR2020-00042)
`The Petition concerning the ’678 patent was afforded a filing date of March
`
`3, 2020. The Board has not made an institution decision.
`E.
`The ’682 Patent (PGR2020-00052)
`The Petition concerning the ’682 patent was afforded a filing date of April 2,
`
`2020. The Board has not made an institution decision.
`F.
`The ’978 Patent (PGR2020-00067)
`The Petition concerning the ’978 patent was afforded a filing date of June 2,
`
`2020. The Board has not made an institution decision.
`
`
`
`Dated: September 9, 2020
`KILPATRICK TOWNSEND LLP
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`
`
`/John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Attorneys for Patent Owner GREE, Inc.
`
`
`/Brian M. Hoffman/
`Brian M. Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
`
`
`
`3
`
`
`
`PGR2020-00067
`Joint Motion to Terminate
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on September 9,
`
`2020, a copy of the foregoing document, JOINT MOTION TO TERMINATE and
`
`Exhibit 1020 were served on Patent Owner’s lead and backup counsel in their
`
`entirety by electronic service by email at the email addresses provided below:
`
`John C. Alemanni
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`jalemanni@kilpatricktownsend.com
`
`Kasey E. Koballa
`Kilpatrick Townsend & Stockton LLP
`607 14th Street, N.W., Suite 900
`Washington, D.C. 20005
`kkoballa@kilpatricktownsend.com
`
`
`
`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
`
`
`
`Dated: September 9, 2020
`
`FENWICK & WEST LLP
`
`/Brian M. Hoffman/
`Brian M. Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
`
`
`
`
`Fenwick & West LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`
`4
`
`
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