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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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`SONY MOBILE COMMUNICATIONS (USA) INC.
`Petitioner
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`v.
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`CONTENT AGGREGATION SOLUTIONS LLC
`Patent Owner
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`Case CBM2016-00098
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`U.S. Patent No. 8,756,155
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`JOINT MOTION TO TERMINATE PROCEEDING
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 327(a), Petitioner Sony Mobile Communications
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`(USA) Inc. and Patent Owner Content Aggregation Solutions LLC jointly request
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`that this covered business method review proceeding involving U.S. Patent No.
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`8,756,155 (“the ’155 Patent”) be terminated based on a settlement between
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`Petitioner and Patent Owner (“the Parties”).
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`II. REASONS FOR GRANTING THE MOTION
`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
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`instant motion on February 8, 2017. IPR2013-00428, Paper No. 56 provides
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`guidance as to the content of a motion to terminate. There, the Board indicates that
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`a joint motion, such as this one, should (a) include a brief explanation as to why
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`termination is appropriate; (b) identify all parties in any related litigation involving
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`the patent at issue; (c) identify any related proceedings currently before the Office,
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`and (d) discuss specifically the current status of each such related litigation or
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`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
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`motion satisfies each of the above requirements and is accompanied by a copy of
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`the Parties’ settlement agreement, as required by 35 U.S.C. § 327(b) and 37 C.F.R.
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`§ 42.74(b).
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`- 1 -
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`Brief Explanation of Why Termination is Appropriate
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`a.
`Termination is appropriate because a final written decision has not been
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`reached in this proceeding. Indeed, Petitioner filed its petition for Covered
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`Business Method review on August 19, 2016. The Board has not yet rendered an
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`institution decision in this proceeding.
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`Termination of this proceeding is appropriate because Petitioner will no
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`longer be participating in this proceeding, and the Board has not decided the merits
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`of the proceeding. The Parties have settled their disputes and executed a
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`settlement agreement to terminate this proceeding, as well as the Parties’ related
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`district court litigation regarding the ’155 Patent: Content Aggregation Solutions
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`LLC v. Sony Mobile Communications Inc. et al., Case No. 3:16-cv-00531 (S.D.
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`Cal.). As to the district court litigation, on November 29, 2016, the district court
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`found the ’155 patent invalid. The district court entered final judgment on
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`December 2, 2016. In view of the settlement agreement, the district court’s
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`invalidity decision and judgment will not be appealed, and the litigation has
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`terminated as to all parties.
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`b.
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`All Parties in Any Pending Related Litigation Involving the
`Patents at Issue
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`In addition to Sony Mobile Communications (USA) Inc., there are additional
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`defendants in related district court litigation: Sony Mobile Communications Inc.,
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`Sony Mobile Communications AB, LG Electronics, Inc., LG Electronics USA,
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`- 2 -
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`Inc., Huawei Technologies Co., Ltd., Huawei Technologies (USA), Co. Ltd., Blu
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`Products Inc., Sharp Corporation, Sharp Electronics Corporation, and ZTE
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`Corporation. The settlement agreement terminated the district court litigation as to
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`all of these additional defendants.
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`Related Proceedings Currently Before the Office
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`c.
`There is no other pending proceeding involving the ’155 Patent before the
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`Office.
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`d.
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`Current Status of Each Such Related Litigation or Proceeding
`With Respect to Each Party to the Litigation or Proceeding
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`Sections II.b and c above indicate the status of each related litigation or
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`proceeding with respect to each party to the litigation or proceeding.
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`III. SETTLEMENT AGREEMENT
`Pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(b), the Parties’
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`settlement agreement is in writing, and a true and correct copy is being filed
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`concurrently herewith as Exhibit 1021.1 The Parties are also filing concurrently
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`herewith a joint request under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c) to treat
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`the settlement agreement as business confidential information and keep it separate
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`from the files of the ’155 Patent.
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`1 The settlement agreement is being filed via the E2E system with access to the
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`“Parties and Board only.”
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`- 3 -
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`IV. CONCLUSION
`For all of these reasons, the Parties respectfully request termination of this
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`proceeding.
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`Dated: February 9, 2017
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`By: /Joseph P. Oldaker/
`Joseph P. Oldaker
`Registration No. 62,041
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`Counsel for Patent Owner
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`Respectfully submitted,
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`By: /Naveen Modi/
`Naveen Modi
`Registration No. 46,224
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`Counsel for Petitioner
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`- 4 -
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 9, 2017, a copy of the foregoing Joint
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`Motion to Terminate Proceeding was served by e-mail upon the following:
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`Joseph P. Oldaker (joseph@nelbum.com; kris@nelbum.com)
`Matthew C. Juren (matthew@nelbum.com)
`Timothy E. Grochocinski (tim@nelbum.com)
`15020 S. Ravinia Avenue, Suite 29
`Orland Park, Illinois 60462
`Nelson Bumgardner, P.C.
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`Respectfully submitted,
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`By: /Naveen Modi/
`Naveen Modi
`Registration No. 46,224
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`Counsel for Petitioner
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`Dated: February 9, 2017
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