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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Under Armour, Inc.,
`Petitioner,
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`v.
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`adidas AG,
`Patent Owner
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`———————
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`Case No. IPR2015-01531
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`U.S. Patent No. 8,725,276
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`PETITIONER’S UNOPPOSED MOTION TO DISMISS
`PROCEEDING NO. IPR2015-01531 WITHOUT PREJUDICE
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`Case No. IPR2015-01531
`U.S. Pat. No. 8,725,276
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`Pursuant to the Board’s September 8, 2015 email to Petitioner and Patent
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`Owner (Exhibit 1, attached) permitting Petitioner to withdraw its Petition in
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`IPR2015-01531 and to file a new Petition as to the same patent, U.S. Patent No.
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`8,725,276 (“the ’276 patent”), on or before September 11, 2015, Petitioner hereby
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`requests dismissal of the pending Petition and termination of proceeding number
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`IPR2015-01531 without prejudice.
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`Petitioner met and conferred with Patent Owner and Patent Owner has
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`informed Petitioner that Patent Owner does not object to Petitioner filing this
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`motion, and does not oppose dismissal of IPR2015-01531 without prejudice to
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`Petitioner filing a new Petition as to the ’276 patent. Petitioner will concurrently
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`file a new Petition for inter partes review of the ’276 patent on or before
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`September 11, 2015.
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`Petitioner respectfully submits that the current status of the present
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`proceedings and the lack of prejudice to Patent Owner support granting this
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`motion. Proceeding number IPR2015-01531 is still in a preliminary stage—the
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`Petition was verified and afforded a filing date on July 23, 2015, Patent Owner has
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`not filed a preliminary response, and the Board has not made any rulings
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`concerning the merits of the Petition. The filing of a new Petition on or before
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`September 11, 2015 is within the time permitted under the rules. 35 U.S.C.
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`§ 315(b). Patent Owner will not be prejudiced by the dismissal of the original
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`Case No. IPR2015-01531
`U.S. Pat. No. 8,725,276
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`Petition because the claims that will be the subject of the new Petition will be the
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`same, no new prior art will be identified, and the Patent Owner will have the full
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`statutorily-authorized time to prepare a response based on the filing date accorded
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`the new Petition. Under these circumstances, Petitioner submits that it is
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`appropriate to dismiss the pending Petition pursuant to the Board’s authority under
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`at least 37 C.F.R. §§ 42.5(a) and 42.71(a).
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`Therefore Petitioner respectfully requests that the Board grant Petitioner’s
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`motion to dismiss, and terminate proceeding number IPR2015-01531 without
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`prejudice.
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`Respectfully submitted,
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` /s/ Brian E. Ferguson
`Brian E. Ferguson (Reg. No. 36,801)
`Weil Gotshal & Manges LLP
`1300 Eye Street NW Suite 900
`Washington, DC 20005
`T: 202-682-7516
`brian.ferguson@weil.com
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`Anish Desai (Reg. No. 73,760)
`Weil Gotshal & Manges LLP
`1300 Eye Street NW Suite 900
`Washington, DC 20005
`T: 202-682-7103
`anish.desai@weil.com
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`Dated: September 10, 2015
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`Case No. IPR2015-01531
`U.S. Pat. No. 8,725,276
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on September 10, 2015, the foregoing
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`PETITIONER’S UNOPPOSED MOTION TO DISMISS
`PROCEEDING NO. IPR2015-01531 WITHOUT PREJUDICE
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`was served via electronic mail, upon the following counsel of record:
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`Mitchell G. Stockwell
`Wab P. Kadaba
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309
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`mstockwell@kilpatricktownsend.com
`wkadaba@kilpatricktownsend.com
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`
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`/s/ Timothy J. Andersen a
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7000
`timothy.andersen@weil.com
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`EXHIBIT 1
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`EXHIBIT 1
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`
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`From: Ferguson, Brian
`Sent: Tuesday, September 08, 2015 11:56 AM
`To: 'Trials'
`Cc: Kadaba, Wab; Stockwell, Mitch; Desai, Anish; Andersen, Timothy
`Subject: RE: Case Number IPR2015-01531: Petitioners' Request to File Motion to Withdraw the Petition
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`
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`Dear Patent and Trial Appeal Board:
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`Thank you for your message below. I apologize for the ambiguity in my original message. I have confirmed with Patent Owner
`that it consents to the relief requested, that is, Petitioner withdrawing the current petition and filing a new petition. Patent
`Owner does so with the understanding that it will have the full statutory period to serve its Preliminary Response once the new
`petition is filed and verified, and also reserves the right to use the originally filed petition and exhibits for purposes of cross
`examination.
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`Based on this, Petitioner believes a call today with the Board is unnecessary, and Petitioner will proceed to file a motion to
`withdraw the current petition and will file a new petition on or before September 11, 2015. If Petitioner’s understanding is
`incorrect, please let us know. Thank you for your consideration.
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`Respectfully submitted,
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`Brian E. Ferguson
`Lead Counsel of Record for Petitioners in Case Number IPR2015‐01531.
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`
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`Brian E. Ferguson
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005‐3314
`brian.ferguson@weil.com
`+1 202 682 7516 Direct
`+1 301 801 8870 Mobile
`+1 202 857 0940 Fax
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`
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`From: Vignone, Maria [mailto:Maria.Vignone@USPTO.GOV] On Behalf Of Trials
`Sent: Tuesday, September 08, 2015 8:09 AM
`To: Ferguson, Brian; Trials
`Cc: Kadaba, Wab; Stockwell, Mitch; Desai, Anish; Andersen, Timothy
`Subject: RE: Case Number IPR2015-01531: Petitioners' Request to File Motion to Withdraw the Petition
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`Counsel: It is not entirely clear whether patent owner consents to the relief requested or consents merely to the filing
`of a motion that would seek the relief. If patent owner consents to the relief requested, petitioner may withdraw its
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`petition and file a new petition on or before September 11, 2015. If patent owner does not consent to the relief
`requested, we will schedule a call on September 8 during the allotted time. Either way, petitioner is to update the
`board before 1pm on September 8, 2015.
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`Thank you,
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`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571‐272‐4645
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`From: Ferguson, Brian [mailto:brian.ferguson@weil.com]
`Sent: Friday, September 04, 2015 12:52 PM
`To: Trials
`Cc: Kadaba, Wab; Stockwell, Mitch; Desai, Anish; Andersen, Timothy
`Subject: Case Number IPR2015-01531: Petitioners' Request to File Motion to Withdraw the Petition
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`Dear Patent and Trial Appeal Board:
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`We are counsel of record for petitioners Under Armour and MapMyFitness in Case Number IPR2015‐01531, which concerns a
`petition for inter partes review of U.S. Patent No. 8,752,276 (“the 276 patent”). On July 23, 2015 the Board verified the
`petition and afforded it a filing date of July 1, 2015. The Patent Owner’s preliminary response is therefore not due until
`October 23, 2015.
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`Petitioners request authorization to file a motion to withdraw the petition, in order to file a new petition that contains
`arguments not present in the current petition. Pursuant to 35 U.S.C. § 315(b), Petitioners’ deadline for filing the new petition is
`September 11, 2015. Because the current proceeding is still in its preliminary stage and Patent Owner has not filed a
`preliminary response, Petitioners respectfully request the Board grant it permission to proceed as indicated herein.
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`Petitioners have met and conferred with counsel of record for the Patent Owner, who have indicated that the Patent Owner
`does not oppose Petitioners’ request. If the Board determines a call is necessary to discuss the request, the parties are
`generally available at the following day and times:
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`September 8 from 1:00 pm ET to 5:00 pm ET.
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`Thank you for your consideration and attention.
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`Respectfully submitted,
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`Brian E. Ferguson
`Lead Counsel of Record for Petitioners in Case Number IPR2015‐01531.
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`Brian E. Ferguson
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`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005-3314
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`2
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`brian.ferguson@weil.com
`+1 202 682 7516 Direct
`+1 301 801 8870 Mobile
`+1 202 857 0940 Fax
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