UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION,
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`HTC CORPORATION, AND HTC AMERICA, INC.
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`Petitioners
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`v.
`NONEND INVENTIONS, N.V.,
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`Patent Owner
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`PTAB Case No. IPR2016-00225
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`Patent No. 8,099,513 B2
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`AND 37 C.F.R. § 42.74
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`129051591.2
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`MICROSOFT CORPORATION,
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`HTC CORPORATION, AND HTC AMERICA, INC.
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`Petitioners
`
`v.
`NONEND INVENTIONS, N.V.,
`
`Patent Owner
`
`
`
`
`
`
`PTAB Case No. IPR2016-00225
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`Patent No. 8,099,513 B2
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`
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`AND 37 C.F.R. § 42.74
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`129051591.2
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`
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`PTAB Case No. IPR2016-00225
`Patent No. 8,099,513 B2
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`
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(a)-(b), Petitioners HTC
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`Corporation and HTC America, Inc. (collectively, “HTC”) and Patent Owner
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`Nonend Inventions, N.V. (“Nonend”) jointly move to terminate the present inter
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`partes review proceeding in light of the parties’ resolution of their dispute relating
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`to U.S. Patent No. 8,099,513 B2 (“the ’513 patent”) and the executed written
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`agreement regarding the parties’ resolution. (This proceeding has already been
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`terminated as to petitioner Microsoft Corporation.)
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`Termination is appropriate in the instant proceeding because the dispute
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`between HTC and Nonend has been resolved. The IPR petition was accorded a
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`Nov. 20, 2015 filing date and this proceeding is at a sufficiently early stage.
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`As required by 35 U.S.C. § 317(b), the parties are filing, concurrently
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`herewith, a true copy of their executed written agreement as Exhibit 1067. The
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`parties further request, pursuant to 37 C.F.R. § 42.74(c), that the agreement be
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`treated as confidential business information and kept separate from the files of the
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`involved patent. The parties are filing, concurrently herewith, a motion to treat the
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`settlement agreement as confidential business information pursuant to 35 U.S.C. §
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`327(b) and 37 C.F.R. § 42.74(c).
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`
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`129051591.2
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`1
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`
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`PTAB Case No. IPR2016-00225
`Patent No. 8,099,513 B2
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`
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`The applicable statute, 35 U.S.C. § 317(a), provides that an inter partes
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`review proceeding “shall be terminated with respect to any petitioner upon the
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`joint request of the petitioner and the patent owner, unless the Office has decided
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`the merits of the proceeding before the request for termination is filed.” (emphasis
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`added). Moreover, strong public policy considerations favor settlement between
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`parties to an inter partes review proceeding. Indeed, the Office Patent Trial
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`Practice Guide provides:
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`N. Settlement. There are strong public policy reasons to favor
`settlement between the parties to a proceeding. The Board will be
`available to facilitate settlement discussions, and where appropriate,
`may require a settlement discussion as part of the proceeding. The
`Board expects that a proceeding will terminate after the filing of a
`settlement agreement, unless the Board has already decided the merits
`of the proceeding.
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`The Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14
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`2012).
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`Notably, the IPR petition was filed on Nov. 20, 2015 and thus this
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`proceeding is at a sufficiently early stage where no motions or actions are
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`outstanding and the Board has not invested significant resources in this proceeding.
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`Patent Owner’s Preliminary Response is due March 9, 2016 and has not been filed
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`yet. The due date for the Board’s institution decision is June 9, 2016. Therefore,
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`129051591.2
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`2
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`PTAB Case No. IPR2016-00225
`Patent No. 8,099,513 B2
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`the Office has not decided the merits of the proceeding. No public interest factors
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`militate against termination of this proceeding.
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`Under 35 U.S.C. § 317(a), because Petitioner HTC and Patent Owner
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`Nonend request this termination, no estoppel under 35 U.S.C. § 315(e) shall attach
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`as to Petitioner HTC.
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`Wherefore, HTC and Nonend respectfully request termination of the Inter
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`Partes Review of U.S. Patent No. 8,099,513, PTAB Case No. IPR2016-00225.
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`Respectfully submitted,
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` /Matthew J. Antonelli/
`Lead Counsel
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`Matthew J Antonelli
`Zachariah Harrington
`Kris Yue Teng
`Larry Dean Thompson , Jr
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`Attorneys for Patent Owner
`Nonend Inventions, N.V.
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`Dated: February 23, 2016
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`
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`Antonelli, Harrington & Thompson LLP
`4306 Yoakum Blvd., Ste. 450
`Houston, TX 77006
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`129051591.2
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`3
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`PTAB Case No. IPR2016-00225
`Patent No. 8,099,513 B2
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`Respectfully submitted,
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` /Bing Ai/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
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`Back-up Counsel
`Matthew C. Bernstein, Pro Hac Vice
`Kevin J. Patariu, Reg. No. 63,210
`Christopher L. Kelley, Reg. No. 42,714
`Vinay P. Sathe, Reg. No. 55,595
`Philip A. Morin, Reg. No. 45,926
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`Attorneys for Petitioner
`HTC
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`Dated: February 23, 2016
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`
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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`129051591.2
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`4
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`PTAB Case No. IPR2016-00225
`Patent No. 8,099,513 B2
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
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`The undersigned hereby certifies that a true copy of the foregoing JOINT
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`MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R.
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`§ 42.74 and supporting materials have been served in its entirety this 23rd Day of
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`February 2016 on the following parties via electronic mail:
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`Bing Ai
`Matthew C. Bernstein
`Kevin J. Patariu
`Christopher L. Kelley
`Vinay P. Sathe
`Philip A. Morin
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`PerkinsServiceMSFT-Nonend-IPR@perkinscoie.com
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`
` /Matthew J. Antonelli/
`Reg. No. 45,973
`4306 Yoakum Blvd., Ste. 450
`Houston, TX 77006
`Lead Counsel for Patent Owner
`Nonend Inventions, N.V.
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`
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`129051591.2
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