`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`LENOVO (UNITED STATES) INC.,
`Petitioners,
`
`v.
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`CRESWELL HOLDINGS LLC,
`Patent Owner.
`_________________
`
`CASE IPR2016-01090
`Patent 6,340,803
`__________________
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`AMENDED JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. §
`317 AND 37 C.F.R. § 42.7
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`AMENDED JOINT NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C.
`§ 317(b) AND 37 C.F.R. § 42.74
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`AMENDED 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)
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`1
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`Pursuant to 35 U.S.C. § 317, and as authorized by the Board Order dated
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`October 28, 2016, Petitioner Lenovo (United States) Inc. (“Lenovo”) and Patent
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`Owner Creswell Holdings LLC (“Creswell”) jointly request termination of Inter
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`Partes Review No. IPR2016-01090 (“the IPR”) involving U.S. Patent No. 6,340,803
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`(“the ’803 Patent”).
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`Creswell and Lenovo reached an agreement settling the matters in controversy
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`among the Parties with respect to the ’803 Patent. Specifically, the district court
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`litigation involving Petitioner Lenovo has been dismissed, Creswell Holdings, LLC.
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`v. Lenovo (United States) Inc., 4:15-cv-407 (EDTX) and the parties have reached an
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`agreement on any remaining items of controversy.
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`Pursuant to 37 C.F.R. § 42.74(b), the above-referenced agreement is in
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`writing, and a true and correct copy of that document is being filed herewith as
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`Exhibit 2002.
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`Creswell and Lenovo hereby jointly request that the above-referenced
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`agreement be treated as business confidential information and be kept separate from
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`the files of the above-captioned IPR pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(c). There are no other agreements, oral or written, between the parties made
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`in connection with, or in contemplation of, the termination of this proceeding.
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`2
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`I.
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`BACKGROUND
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`Lenovo filed a petition requesting inter partes review of the ’803 Patent on
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`May 23, 2016. Patent Owner Creswell filed its Preliminary Response on September
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`6, 2016. The Board has not yet made any decision regarding institution of inter
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`partes review.
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`Creswell and Lenovo reached an agreement settling the matters in controversy
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`among them involving the ’803 Patent, including the related proceedings before the
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`Board.
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`On October 22, 2016 Creswell and Lenovo requested Board permission to file
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`a joint motion to terminate this proceeding. On October 28, 2016, the Board
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`authorized the filing of the requested joint motion.
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`II. TERMINATION IS APPROPRIATE.
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`Termination of the IPR is appropriate as the Board has not yet “decided the
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`merits of th[is] proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48768 (Aug. 14, 2012). Notably, no dispute remains between the
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`Creswell and Lenovo regarding the ’803 Patent. Creswell and Lenovo have agreed
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`to jointly request termination of the IPR, and the litigation between Creswell and
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`Lenovo involving the same patent has been dismissed.
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`3
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`III. STATUS OF RELATED LITIGATIONS
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`As noted above, the related district court action between Patent Owner and
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`Petitioner Lenovo has been dismissed. Lenovo and Creswell represent that the
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`current status of the other related litigation matters is as follows:
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`Matter
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`Status
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`Creswell Holdings LLC v. Hewlett Packard Co., Case.
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`Dismissed
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`No. 4:15-cv-00407
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`IV. REQUEST TO TREAT THE AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION
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`Creswell and Lenovo hereby request that the above-referenced agreement
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`filed concurrently herewith as Exhibit 2002 be treated as confidential business
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`information and be kept separate from the file of the above-captioned IPR pursuant
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`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). There are no other agreements, oral
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`or written, between the parties made in connection with, or in contemplation of, the
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`termination of this proceeding.
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`V. CONCLUSION
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`For the reasons stated above, Creswell and Lenovo respectfully request that
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`the Board terminate the IPR and treat the related agreement filed herewith as
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`business confidential information and keep that agreement separate from the file of
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`the above-captioned IPR.
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`DATED November 4, 2016.
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`Respectfully submitted,
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`By: /s/ Neal Massand
`Hao Ni
`Registration No. 53,858
`hni@nilawfirm.com
`Neal G. Massand
`Registration No. 54,296
`nmassand@nilawfirm.com
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`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