UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________
`
`NJOY, INC., CB DISTRIBUTORS, INC.,
`DR DISTRIBUTORS, LLC, FIN BRANDING GROUP, LLC,
`ELECTRONIC CIGARETTES INTERNATIONAL GROUP, LTD., f/k/a VIC-
`TORY ELECTRONIC CIGARETTES CORPORATION, and, LOGIC TECH-
`NOLOGY DEVELOPMENT, LLC,
`Petitioners,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`
`___________________________________
`
`
`
`Case IPR2015-01299
`Patent 8,910,641 B2
`
`___________________________________
`
`
`
`JOINT MOTION TO TERMINATE PETITIONER LOGIC PURSUANT TO
`35 U.S.C. § 317
`
`
`
`
`
`
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________
`
`NJOY, INC., CB DISTRIBUTORS, INC.,
`DR DISTRIBUTORS, LLC, FIN BRANDING GROUP, LLC,
`ELECTRONIC CIGARETTES INTERNATIONAL GROUP, LTD., f/k/a VIC-
`TORY ELECTRONIC CIGARETTES CORPORATION, and, LOGIC TECH-
`NOLOGY DEVELOPMENT, LLC,
`Petitioners,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`
`___________________________________
`
`
`
`Case IPR2015-01299
`Patent 8,910,641 B2
`
`___________________________________
`
`
`
`JOINT MOTION TO TERMINATE PETITIONER LOGIC PURSUANT TO
`35 U.S.C. § 317
`
`
`
`
`
`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Logic
`
`Technology Development, LLC (“Logic”) and Patent Owner Fontem Holdings 1
`
`B.V. (“Patent Owner”) jointly move the Patent Trial and Appeal Board (“Board”)
`
`to terminate Petitioner Logic from IPR2015-01299. There are multiple Petitioners
`
`in IPR2015-01299. Petitioner NJOY, Inc. (“NJOY”) and Patent Owner filed a
`
`similar request to terminate Petitioner NJOY from IPR2015-01299, and Petitioner
`
`CB Distributors, Inc. and DR Distributors, LLC (together, “CB/DR”) and Patent
`
`Owner also filed a similar request to terminate Petitioner CB/DR from IPR2015-
`
`01299.
`
`On December 2, 2015, Patent Owner and Petitioner Logic notified the Board
`
`that Patent Owner reached a settlement agreement as to Petitioner Logic, including
`
`a license agreement, resolving all disputes between Patent Owner and Petitioner
`
`Logic involving the patent-at-issue in this IPR, and further requested guidance and
`
`permission to file a motion to terminate Petitioner Logic from IPR2015-01299. On
`
`December 2, 2015, the Board authorized Patent Owner and Petitioner Logic to file
`
`a joint motion to terminate and a joint request to treat the settlement agreement as
`
`business confidential.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy (in-
`
`cluding counterparts) of the confidential settlement agreement and license agree-
`
`ment is filed herewith. Because the settlement agreement and license agreement
`
`1
`
`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`are confidential, Patent Owner and Petitioner Logic respectfully request that it be
`
`treated as business confidential information and kept separate from the underlying
`
`patent file, as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Patent
`
`Owner and Petitioner Logic request that the settlement and license agreement be
`
`accessible to the “Board Only” because Petitioners NJOY, CB/DR, and FIN
`
`Branding Group, LLC, Electronic Cigarettes International Group, LTD., f/k/a Vic-
`
`tory Electronic Cigarettes Corporation (“FIN/ECIG”) should not have access to the
`
`settlement and license agreement.
`
`As stated in 35 U.S.C. § 317(a), because Patent Owner and Petitioner Logic
`
`are jointly requesting this termination, no estoppel under 35 U.S.C. § 315(e) shall
`
`attach to Petitioner Logic.
`
`I.
`
`TERMINATION OF PETITIONER LOGIC FROM THE INTER
`PARTES REVIEW PROCEEDING IS APPROPRIATE
`
`The statutory provision on a settlement relating to Inter Partes Reviews pro-
`
`vides that an Inter Partes Review “shall be terminated with respect to any petition-
`
`er upon the joint request of the petitioner and the patent owner, unless the Office
`
`has decided the merits of the proceeding before the request for termination is
`
`filed.” 35 U.S.C. § 317.
`
`Because the Board has not decided the merits of the Inter Partes Review
`
`Proceeding, Section 317 provides that the Inter Partes Review Proceeding should
`
`be terminated with respect to Petitioner Logic.
`
`2
`
`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`II. MATTERS RELATED TO THE INTER PARTES REVIEW
`
`The patent-at-issue in the IPR2015-01299 is the subject of several federal
`
`district court litigations, including one matter that involves Patent Owner and Peti-
`
`tioner Logic. There are no other petitions for IPR or IPR of the patent-at-issue.
`
`The settlement agreement and license agreement have resolved all disputes involv-
`
`ing the patent-at-issue between Patent Owner and Petitioner Logic.
`
`A. Case No. 2:14-CV-01645 (C.D. Cal.) Relates to the Inter Partes
`Review
`
`Patent Owner filed a patent infringement suit against Petitioner Logic in the
`
`United States District Court for the Central District of California, captioned Fon-
`
`tem Ventures BV et al. v. Logic Technology Development LLC, Case No. 2-14-cv-
`
`09271. Patent Owner accused Petitioner Logic of infringing the patent-at-issue in
`
`the Inter Partes Review Proceeding in addition to one other patent. This litigation
`
`was consolidated with several related cases asserting seven additional patents
`
`against Petitioner Logic. As a result, a total of nine patents have been asserted
`
`against Petitioner Logic in the consolidated action (Case No. 2-14-cv-01645).
`
`Those litigations are covered by the settlement agreement and license agreement.
`
`Patent Owner also filed patent infringement suits against other entities as-
`
`serting the patent-at-issue in the United State District Court for the Central District
`
`of California, captioned Fontem Ventures BV et al. v. LOEC, Inc. et al., Case No.
`
`2-14-cv-09265; Fontem Ventures BV et al. v. NJOY, Inc. et al., Case No. 2-14-cv-
`
`3
`
`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`09263; Fontem Ventures B.V. et al. v. CB Distributors, Inc. et al., Case No. 2:14-
`
`cv-09266; Fontem Ventures BV et al. v. FIN Branding Group, LLC et al., Case No.
`
`2-14-cv-09268; Fontem Ventures BV et al. v. Ballantyne Brands, LLC, Case No. 2-
`
`14-cv-09269; Fontem Ventures BV et al. v. Spark Industries, LLC, Case No. 2-14-
`
`cv-09270; Fontem Ventures BV et al. v. Vapor Corp., Case No. 2-14-cv-09267;
`
`Fontem Ventures BV et al. v. VMR Products, LLC, Case No. 2-14-cv-09273.
`
`B. Board Proceedings
`
`As mentioned above, there are no other petitions for Inter Partes Review of
`
`the patent-at-issue.
`
`III. CONCLUSION
`
`Patent Owner and Petitioner Logic respectfully request that the Board grant
`
`Patent Owner and Petitioner Logic’s joint motion to terminate Petitioner Logic
`
`from IPR2015-01299 and grant the accompanying request to treat the settlement
`
`agreement and license agreement as business confidential information.
`
`Petitioner Logic and Patent Owner are available at the Board’s convenience
`
`to discuss these related matters in more detail or answer any additional questions
`
`raised by this joint motion.
`
`4
`
`
`
`
`
`
`
`
`
`December 3, 2015
`
`By: /James H. Morris/
`James H. Morris (Lead Counsel)
`Reg. No. 34,681
`WOLF, GREENFIELD & SACKS,
`P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`P: 617-646-8000 / F: 617-646-8646
`JMorris-PTAB@wolfgreenfield.com
`
`Lead Counsel for Petitioners
`
`
`5
`
`
`
`IPR2015-01299
`U.S. Patent No. 8,910,641
`Respectfully submitted,
`
`
`By: /Michael J. Wise/ _______
`Michael J. Wise (Lead Counsel)
`Reg. No. 34,047
`PERKINS COIE LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3210
`Facsimile: 310-788-3399
`MWise@PerkinsCoie.com
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the following document has
`
`
`
`been served in its entirety by filing the JOINT MOTION TO TERMINATE PETI-
`
`TIONER LOGIC PURSUANT TO 35 U.S.C. § 317 through the Patent Review
`
`Processing System, as well as by causing the aforementioned document to be elec-
`
`tronically mailed, pursuant to the parties’ agreement, to the following attorneys of
`
`record for the Petitioners listed below:
`
`James H. Morris (Lead Counsel)
`Edmund J. Walsh (Backup Counsel)
`WOLF, GREENFIELD & SACKS, P.C.
`JMorris-PTAB@wolfgreenfield.com
`EWalsh-PTAB@wolfgreenfield.com
`
`
`Dated:
`
`
`
`
`
`December 3, 2015
`
`
`
`
`
`
`
`/Amy Candeloro/
`Paralegal
`PERKINS COIE LLP
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