IPR2016-01109
`Patent 8,706,627
`
`Filed on behalf of Unified Patents Inc.
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`SENTEGRA, LLC
`Patent Owner
`
`IPR2016-01109
`Patent 8,706,627
`
`
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`Patent 8,706,627
`
`Filed on behalf of Unified Patents Inc.
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`SENTEGRA, LLC
`Patent Owner
`
`IPR2016-01109
`Patent 8,706,627
`
`
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`
`IPR2016-01109
`Patent 8,706,627
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Unified Patents Inc.
`
`(“Unified”) and Patent Owner Sentegra, LLC (“Sentegra”) jointly request
`
`termination of the Inter Partes Review of U.S. Patent 8,706,627 in IPR2016-
`
`01109.
`
`Petitioner and Patent Owner have entered into a written confidential
`
`settlement agreement that fully resolves all underlying disputes between the
`
`parties, including IPR2016-01109 against U.S. Patent 8,706,627. The
`
`Parties are concurrently filing a copy of the Settlement Agreement as
`
`EX1015 along with a request to treat it as confidential business information
`
`pursuant to 35 U.S.C. § 317(b). The undersigned represents that there are no
`
`other agreements, oral or written, between the parties made in connection
`
`with, or in contemplation of, the termination of the present proceeding and
`
`that EX1015 represents a true and accurate copy of the agreement between
`
`the parties that resolves the present proceeding.
`
`On December 16, 2016, the Parties informed the Board of the
`
`settlement via e-mail and requested authorization to file a joint motion to
`
`terminate the proceeding with respect to both the Patent Owner and the
`
`Petitioner. As set forth in an e-mail dated January 3, 2017, the Board
`
`authorized the filing of the requested joint motion to terminate this
`
`proceeding as to both parties. Accordingly, Petitioner and Patent Owner
`
`
`
`IPR2016-01109
`Patent 8,706,627
`
`jointly request termination of the present proceeding.
`
`Public policy favors terminating the present inter partes review
`
`proceeding. Congress and federal courts have expressed a strong interest in
`
`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v.
`
`August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to
`
`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d
`
`1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert.
`
`denied, 479 U.S. 950 (1986). The Federal Circuit places a particularly strong
`
`emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
`
`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
`
`antagonism and hostility between parties). And, the Board’s Trial Practice
`
`Guide stresses that “[t]here are strong public policy reasons to favor
`
`settlement between the parties to a proceeding.” Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
`
`Ending this IPR early promotes the Congressional goal of establishing
`
`a more
`
`efficient patent
`
`system by
`
`limiting unnecessary
`
`and
`
`counterproductive costs. See Changes to Implement Inter Partes Review
`
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
`
`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
`
`Permitting termination as to all parties provides certainty and fosters an
`
`
`
`IPR2016-01109
`Patent 8,706,627
`
`environment that promotes settlements, creating a timely, cost-effective
`
`alternative to litigation.
`
`Additionally, termination of this IPR is appropriate as the Board has
`
`not yet “decided the merits of the proceeding.” See, e.g., Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Unified filed its
`
`petition for inter partes review on May 27, 2016. The Board instituted a
`
`proceeding on November 29, 2016. No depositions have taken place and
`
`neither the Patent Owner nor the Petitioner have submitted any substantive
`
`briefing post-institution. The parties have now settled their dispute, and
`
`have reached agreement to terminate this inter partes review. The USPTO
`
`can conserve its resources through terminating the proceedings now,
`
`removing the need for the Board to further consider the arguments, to issue
`
`an Institution Decision, and to render a Final Decision. Furthermore, no
`
`other party’s rights will be prejudiced by the termination of this proceeding.
`
`
`
`As the Board requested in its e-mail sent January 3, 2017, the parties
`
`identify the following related district court litigations involving the ‘627
`
`Patent to which the Patent Owner is a party, and the current status of each
`
`litigation. (Petitioner is not a party to any related district court litigations.)
`
`(1) Sentegra, LLC v. Blackberry Limited et al., Case 14-cv-08389
`
`(S.D.N.Y.). This case was voluntarily dismissed on February 27, 2015.
`
`
`
`IPR2016-01109
`Patent 8,706,627
`
`
`
`(2) Sentegra, LLC v. Lenovo Group Limited et al. Case 14-cv-09096
`
`(S.D.N.Y.). This case was voluntarily dismissed on April 28, 2015.
`
`(3) Sentegra, LLC v. LG Electronics MobileComm USA, Inc. et al.,
`
`Case 15-cv-01535 (S.D.N.Y.). This case was dismissed pursuant to a
`
`stipulated dismissal on November 18, 2015.
`
`(4) Sentegra, LLC v. ASUS Computer International, Case 15-cv-
`
`03768 (S.D.N.Y.). This case was transferred to the Northern District of
`
`California, pursuant to transfer order dated June 1, 2016. The California
`
`case, Sentegra, LLC v. ASUS Computer International, Case 16-cv-03136
`
`(N.D. Cal.) was voluntarily dismissed on August 29, 2016.
`
`(5) Sentegra, LLC v. Samsung Electronics America, Inc., Case 15-cv-
`
`09266 (S.D.N.Y.). This case was dismissed pursuant to a stipulated
`
`dismissal on August 23, 2016.
`
`(6) Sentegra, LLC v. BLU Products, Inc., Case 16-cv-00158 (D.
`
`Colo.). On May 5, 2016, defendant moved to dismiss for lack of personal
`
`jurisdiction. On December 20, 2016, the Court granted Sentegra’s request
`
`for limited jurisdictional discovery. The case remains pending.
`
`(7) Sentegra, LLC v. Azend Group Corp., 16-cv-00263 (D. Colo.). On
`
`September 2, 2016, the clerk entered default against defendant. On
`
`
`
`IPR2016-01109
`Patent 8,706,627
`
`September 12, 2016, Sentegra moved for a default judgment against
`
`defendant. The motion remains pending.
`
`
`
`If this joint motion to terminate is not granted, the Patent Owner will
`
`continue to participate in the proceeding by disputing that U.S. Patent
`
`8,706,627 should be invalidated on the ground on which Inter Partes
`
`Review IPR2016-01109 was instituted. Petitioner represents it will no
`
`longer participate, beyond responding to subpoenas for information or
`
`otherwise complying with orders issued by any court or governmental body,
`
`similar to the facts in Oracle Corporation v. Community United IP, LLC,
`
`CBM2013-00015, Paper 13 (terminated July 25, 2013).
`
`
`
`There are no pending, related inter partes review proceedings.
`
`Therefore, for at least these reasons, Unified and Sentegra respectfully
`
`request termination of the Inter Partes Review IPR2016-01109 of U.S.
`
`Patent 8,706,627.
`
`
`
`Date: January 3, 2017
`
`
`
` Respectfully submitted,
`
`___________________________
`Jonathan Stroud, Reg. No. 72,518
`Chief Patent Counsel
`Unified Patents Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01109
`Patent 8,706,627
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the foregoing Joint Motion
`
`to Terminate the Proceeding for Inter Partes Review of U.S. Patent
`
`8,706,627 was served on January 3, 2017 via electronic mail directed to the
`
`attorney of
`
`record
`
`for
`
`the patent at
`
`the
`
`following addresses:
`
`zsilbersher@kskiplaw.com, gkroub@kskiplaw.com, and
`
`info@kskiplaw
`
`.com. Patent Owner has consented to electronic service.
`
`
`
`Date: January 3, 2017
`
` Respectfully submitted,
`
`___________________________
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
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