UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Under Armour, Inc.
`Petitioner
`
`v.
`
`adidas AG,
`Patent Owner
`
`
`
`
`Case No. IPR2015-00698
`
`Patent No. 8,092,345
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`
`
`
`
`
`
`
`
`
`
`1
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Under Armour, Inc.
`Petitioner
`
`v.
`
`adidas AG,
`Patent Owner
`
`
`
`
`Case No. IPR2015-00698
`
`Patent No. 8,092,345
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`
`
`
`
`
`
`
`
`
`
`1
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Joint Motion to Terminate
`
`I.
`
`PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and 37 C.F.R § 42.74,
`
`Petitioner Under Armour, Inc. and Patent Owner adidas AG (collectively, “the
`
`Parties”) jointly request termination of this inter partes review proceeding of U.S.
`
`Patent No. 8,092,345 (“the ‘345 patent”). The parties have settled their dispute and
`
`executed a settlement agreement to terminate this inter partes review and the
`
`parties’ related litigation involving the ‘345 patent.
`
`The IPR cases currently pending between the Parties are listed below:
`
`Trial Number
`IPR2015-00697
`IPR2015-00698
`IPR2015-00700
`IPR2015-01528
`IPR2015-01532
`IPR2015-01891
`
`Patent No.
`7,905,815
`8,092,345
`8,579,767
`8,721,502
`8,652,009
`8,725,276
`
`
`On May 4, 2016, the Parties e-mailed the Board to request the Board’s
`
`authorization to file joint motions to terminate the IPR Proceedings listed above.
`
`The Parties also sought the Board’s authorization to file with the motions to
`
`terminate the IPRs requests to treat the written agreement as business confidential
`
`information. On that same day, the Board authorized the Parties to file both a
`
`motion to terminate and a request to treat the agreement as business confidential
`
`information.
`
`2
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Joint Motion to Terminate
`
`II. REASONS FOR GRANTING THE MOTION
`
`Generally, the Board expects that a proceeding will terminate after the filing
`
`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized filing of the instant
`
`motion on May 4, 2016. Guidance as to the content of a motion to terminate is
`
`provided in IPR2013-00428, Paper No. 56. There, the Board indicated that a joint
`
`motion, such as this one, should (a) include a brief explanation as to why
`
`termination is appropriate; (b) identify all parties in any related litigation involving
`
`the patent at issue; (c) identify any related proceedings currently before the Office;
`
`and (d) discuss specifically the current status of each such related litigation or
`
`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
`
`motion satisfies each of the above requirements and is accompanied by an
`
`agreement made
`
`in connection with
`
`this
`
`termination of
`
`this proceeding
`
`(“Agreement”), as required by 35 U.S.C. § 317(b) and 35 C.F.R. § 42.74 (b).
`
`A.
`
`Brief Explanation of Why Termination is Appropriate
`
`Termination is appropriate because oral argument has not been held, the
`
`Board has not decided the merits of the proceeding, and a final written decision has
`
`not been issued. By virtue of the Agreement, the dispute between the Parties has
`
`been resolved, including the Parties’ related litigation regarding the ‘345 patent:
`
`3
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Joint Motion to Terminate
`
`adidas AG v. Under Armour, Inc. and MapyMyFitness, Inc., 1:14-cv-00130-GMS.
`
`Per the Agreement, the Parties have jointly moved to dismiss the litigation.
`
`B. All Parties in Any Pending Related Litigation Involving the
`Patent at Issue
`
`In addition to Petitioner, Petitioner’s subsidiary MapMyFitness, Inc. is a
`
`defendant in the above-identified litigation. MapMyFitness, Inc. is also a party to
`
`the Agreement. No future litigation amongst the parties or their affiliates involving
`
`the ‘345 patent is contemplated under the terms of the Agreement.
`
`C. Related Proceedings Currently Before the Office
`
`Other than the IPRs identified in Section I, there are no related proceedings
`
`pending before the Office.
`
`D. Current Status of Each Such Related Litigation of Proceeding
`
`With Respect to Each Party in the Litigation or Proceeding, Sections II.B
`
`and II.C above indicate the status of each related litigation or proceeding with
`
`respect to each party to the litigation or proceeding.
`
`III. AGREEMENT
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Agreement is
`
`in writing, and a true and correct copy is being filed concurrently herewith as
`
`4
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Joint Motion to Terminate
`
`Exhibit 2046.1 The Parties are also filing concurrently herewith a joint request
`
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat the Agreement as
`
`business confidential information and keep them separate from the files of the ‘345
`
`patent.
`
`IV. CONCLUSION
`
`For all these reasons, the Parties respectfully request termination of this
`
`proceeding.
`
`
`
`
`
`
`
`
`
`Dated: May 5, 2016
`
`/s/ Brian E. Ferguson
`Brian E. Ferguson
`Reg. No. 36,801
`
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`Phone: 202-682-7000
`brian.ferguson@weil.com
`
`Lead Counsel for Petitioner
`Under Armour Inc.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/s/ Mitchell G. Stockwell
`Mitchell G. Stockwell
`
`Reg. No. 39,389
`
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`Phone : 404-815-6214
`mstockwell@kilpatricktownsend.com
`
`Lead Counsel for Patent Owner
`adidas AG
`
`
`
`
`
`
`
`
`
`
`
`1 The Agreement is being filed via the Patent Review Processing System (PRPS)
`
`with access to the “Parties and Board only.”
`
`
`
`5
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Joint Motion to Terminate
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of JOINT MOTION TO
`
`TERMINATE was served via email on the date below, upon the following:
`
`Brian E. Ferguson
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`Phone: 202-682-7000
`brian.ferguson@weil.com
`
`
`
`Dated: May 5, 2016
`
`
`
`
`
`
`
`
`
`Anish R. Desai
`Weil Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`Phone: 202-682-7103
`anish.desai@weil.com
`
`
`
`/s/ Mitchell G. Stockwell
`Mitchell G. Stockwell
`
`Reg. No. 39,389
`Lead Counsel for Patent Owner
`adidas AG
`
`
`
`6
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
