UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` AMERICAN MEGATRENDS, INC.,
`MICRO-STAR INTERNATIONAL CO., LTD,
`MSI COMPUTER CORP.,
`GIGA-BYTE TECHNOLOGY CO., LTD., AND
`G.B.T., INC.
`Petitioners,
`
`v.
`
`KINGLITE HOLDINGS INC.
`
`Patent Owner
`
`_________________
`
`Case IPR2016-00114
`
`U.S. Patent 5,937,200
`
`_________________
`
`JOINT MOTION TO TERMINATE THE PROCEEDINGS
`UNDER 35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` AMERICAN MEGATRENDS, INC.,
`MICRO-STAR INTERNATIONAL CO., LTD,
`MSI COMPUTER CORP.,
`GIGA-BYTE TECHNOLOGY CO., LTD., AND
`G.B.T., INC.
`Petitioners,
`
`v.
`
`KINGLITE HOLDINGS INC.
`
`Patent Owner
`
`_________________
`
`Case IPR2016-00114
`
`U.S. Patent 5,937,200
`
`_________________
`
`JOINT MOTION TO TERMINATE THE PROCEEDINGS
`UNDER 35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Joint Motion to Terminate
`
`As authorized in the Patent Trial and Appeal Board’s (the “Board”) November
`
`23, 2016 e-mail, and pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ and 42.74, Patent
`
`Owner Kinglite Holdings, Inc (“Patent Owner”) and Petitioners American Megatrends,
`
`Inc., Micro-Star International Co., Ltd, MSI Computer Corp., Giga-Byte Technology
`
`Co., Ltd., and G.B.T., Inc. (“Petitioners”) jointly and respectfully request that the inter
`
`partes review (“IPR”) of U.S. Patent No. 5,937,200 be terminated.
`
`
`
`1.
`Brief Explanation as to Why Termination is Appropriate
`The Board instituted trial in the instant inter partes review proceeding.
`
`Although substantive briefing is complete, the parties have not yet participated in
`
`oral argument, where such oral argument is tentatively scheduled for January 24,
`
`2017. (Scheduling order, paper 16). On November 21, 2016, Patent Owner and
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`Petitioners settled their dispute and executed a confidential settlement agreement to
`
`terminate this proceeding and the parties’ related district court litigations listed
`
`below. A Stipulation and Order of Dismissal agreed to by the parties in the related
`
`district court litigation has been filed in the district court.
`
`Pursuant to 37 C.F.R. § 42.74(b), the parties’ confidential settlement
`
`agreement is in writing, and a true and correct copy is being filed concurrently
`
`herewith as Exhibit 1021. The parties are also filing concurrently herewith a joint
`
`request to treat the confidential settlement agreement as business confidential
`
`information and keep it separate from the files of the IPR and the involved patent
`
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`2
`
`
`
`
`
`
`
`Termination of this proceeding is proper under 35 U.S.C. § 317(a). The Board
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`has terminated such proceedings in cases where “the matter was fully briefed and ready
`
`for final hearing.” Medline Industries, Inc. v. Paul Hartmann AG, IPR 2013-00173,
`
`paper 44 (PTAB 2014); see also The Brinkman Corporation v. A&J Manufacturing,
`
`LLC, IPR 2015-00056, paper 26, (PTAB 2015) (terminating trial when it “is at an
`
`advanced stage post-institution of trial [and] oral argument has not yet occurred”).
`
`Accordingly, the parties respectfully request that the Board terminate the instant inter
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`partes review.
`
`2.
`Related Litigations Involving the Patent-at-Issue
`The related litigations involving the patent at issue in this proceeding, as
`
`well as the defendants in each case, are set forth below.
`
`1. Kinglite Holdings, Inc. v. Micro-Star International Co., Ltd., et al., 14-
`cv-03009 (C.D. Cal.),
`2. Kinglite Holdings, Inc. v. Giga-Byte Technology Co., Ltd., et al., 14-cv-
`04989 (C.D. Cal.),
`3. Kinglite Holdings, Inc. v. Micro-Star International Co., Ltd., et al., 15-
`cv-09612 (C.D. Cal.),
`4. Kinglite Holdings, Inc. v. Giga-Byte Technology Co., Ltd., et al., 15-cv-
`09615 (C.D. Cal.), and
`5. Kinglite Holdings, Inc. v. EliteGroup Computer Systems Co., Ltd., et al.,
`16-cv-00912 (N.D. Cal.).
`
`3
`
`
`
`
`
`
`
`
`
`
`
`Joint Motion to Terminate
`
`3.
`Related Proceedings Currently Before the Office
`There are no related proceedings currently before the Office involving
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`the patent-at-issue and Petitioners. The parties are likewise concurrently filing
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`a similar motion to terminate with respect to Case No. IPR2015-01189.
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`4.
`
`Conclusion
`
`For the foregoing reasons, the parties jointly and respectfully request
`
`
`
`
`
`
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`termination of the present proceeding.
`
`
`
`Date: November 25, 2016
`
`Respectfully submitted,
`
`/Christopher Frerking, reg. no. 42,557/
`Christopher Frerking
`Lead Counsel for Patent Owner
`174 Rumford Street
`Concord, New Hampshire 03301
`Telephone: (603) 706-3127
`
`
`
`
`
`
`
`/Vivek Ganti/
`Vivek Ganti (Reg. No. 71,368)
`Lead Counsel for Petitioners
`HILL, KERTSCHER & WHARTON,
`LLP
`3350 Riverwood Pkwy, Suite 800
`Atlanta, GA 30339
`(770) 953-0995
`
`
`
`
`
`4
`
`
`
`
`
`
`
`CERTIFICATION OF SERVICE
`
`
`The undersigned hereby certifies that the foregoing paper and any
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`supporting materials were served via electronic mail on November 25, 2016, as
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`agreed to by the parties pursuant to 37 C.F.R. § 42.105, in its entirety on the
`
`Respectfully submitted,
`
`HILL, KERTSCHER & WHARTON,
`LLP
`
`
`
`
`
`/Vivek Ganti/
`Vivek Ganti (Reg. No. 71,368)
`Lead Counsel for Petitioners
`
`3350 Riverwood Pkwy, Suite 800
`Atlanta, GA 30339
`(770) 953-0995
`
`following:
`
`
`Christopher Frerking
`chris@ntknet.com
`174 Rumford Street
`Concord, New Hampshire 03301
`Telephone: (603) 706-3127
`
`George C. Summerfield
`summerfield@stadheimgrear.com
`STADHEIM & GREAR, LTD.
`400 N. Michigan Ave.,
`Suite 2200
`Chicago, Illinois 60611
`Telephone: (312) 755-4400
`
`
`
`Date: November 25, 2016
`
`
`
`1
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`
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