`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`LENOVO (UNITED STATES) INC.,
`Petitioners,
`
`v.
`
`CRESWELL HOLDINGS LLC,
`Patent Owner.
`_________________
`
`CASE IPR2016-01090
`Patent 6,340,803
`__________________
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317 AND 37
`C.F.R. § 42.7
`
`
`
`JOINT NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C. § 317(b)
`AND 37 C.F.R. § 42.74
`
`JOINT REQUEST TO TREAT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION PURSUANT TO 35 U.S.C. § 317(b) AND
`37 C.F.R. § 42.74(c)
`
`
`1
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317, and as authorized by the Board Order dated
`
`October 28, 2016, Petitioner Lenovo (United States) Inc. (“Lenovo”) and Patent
`
`Owner Creswell Holdings LLC (“Creswell”) jointly request termination of Inter
`
`Partes Review No. IPR2016-01090 (“the IPR”) involving U.S. Patent No.
`
`6,340,803 (“the ’803 Patent”).
`
`Creswell and Lenovo reached an agreement settling the matters in
`
`controversy among the Parties with respect to the ’803 Patent. Specifically, the
`
`district court litigation involving Petitioner Lenovo has been dismissed, Creswell
`
`Holdings, LLC. v. Lenovo (United States) Inc., 4:15-cv-407 (EDTX) and the
`
`parties have reached an agreement on any remaining items of controversy.
`
`Pursuant to 37 C.F.R. § 42.74(b), the above-referenced agreement is in
`
`writing, and a true and correct copy of that document is being filed herewith as
`
`Exhibit 2002.
`
`Creswell and Lenovo hereby jointly request that the above-referenced
`
`agreement be treated as business confidential information and be kept separate
`
`from the files of the above-captioned IPR pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c). There are no other agreements, oral or written, between the
`
`parties made in connection with, or in contemplation of, the termination of this
`
`proceeding.
`
`
`
`2
`
`
`
`
`
`
`
`I.
`
`BACKGROUND
`
`Lenovo filed a petition requesting inter partes review of the ’803 Patent on
`
`May 23, 2016. Patent Owner Creswell filed its Preliminary Response on
`
`September 6, 2016. The Board has not yet made any decision regarding institution
`
`of inter partes review.
`
`Creswell and Lenovo reached an agreement settling the matters in
`
`controversy among them involving the ’803 Patent, including the related
`
`proceedings before the Board.
`
`On October 22, 2016 Creswell and Lenovo requested Board permission to
`
`file a joint motion to terminate this proceeding. On October 28, 2016, the Board
`
`authorized the filing of the requested joint motion.
`
`II. TERMINATION IS APPROPRIATE.
`
`Termination of the IPR is appropriate as the Board has not yet “decided the
`
`merits of th[is] proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012). Notably, no dispute remains between the
`
`Creswell and Lenovo regarding the ’803 Patent. Creswell and Lenovo have agreed
`
`to jointly request termination of the IPR, and the litigation between Creswell and
`
`Lenovo involving the same patent has been dismissed.
`
`3
`
`
`
`
`
`
`
`III. STATUS OF RELATED LITIGATIONS
`
`As noted above, the related district court action between Patent Owner and
`
`Petitioner Lenovo has been dismissed. Lenovo and Creswell represent that the
`
`current status of the other related litigation matters is as follows:
`
`Matter
`
`Status
`
`Creswell Holdings LLC v. Hewlett Packard Co., Case.
`
`Dismissed
`
`No. 4:15-cv-00807
`
`
`IV. REQUEST TO TREAT THE AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION
`
`Creswell and Lenovo hereby request that the above-referenced agreement
`
`filed concurrently herewith as Exhibit 2002 be treated as confidential business
`
`information and be kept separate from the file of the above-captioned IPR pursuant
`
`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). There are no other agreements,
`
`oral or written, between the parties made in connection with, or in contemplation
`
`of, the termination of this proceeding.
`
`V. CONCLUSION
`
`For the reasons stated above, Creswell and Lenovo respectfully request that
`
`the Board terminate the IPR and treat the related agreement filed herewith as
`
`business confidential information and keep that agreement separate from the file of
`
`the above-captioned IPR.
`
`4
`
`
`
`
`
`
`
`
`
`DATED November 1, 2016.
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Neal Massand
`Hao Ni
`Registration No. 53,858
`hni@nilawfirm.com
`Neal G. Massand
`Registration No. 54,296
`nmassand@nilawfirm.com
`
`NI, WANG & MASSAND, PLLC
`8140 Walnut Hill Ln., Ste. 500
`Dallas, TX 75231
`Tel: (972) 331-4600
`Fax: (972) 314-0900
`
`ATTORNEYS FOR PATENT
`OWNER
`
`By: /s/ Eric J. Klein
`Eric J. Klein (Reg. No. 51,888)
`Email: eklein@akingump.com
`Akin Gump Strauss Hauer & Feld LLP
`1700 Pacific Avenue
`Suite 4100
`Dallas, TX 75201-4624
`Telephone: 214.969.2800
`Fax: 214.969.4343
`
`LEAD COUNSEL FOR
`PETITIONER
`
`5
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