IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IGT
`
`Petitioner,
`
`V.
`
`ARISTOCRAT TECHNOLOGIES
`
`AUSTRALIA PTY LTD.
`
`Patent Owner
`
`Case No. IPR2016—O1170
`
`Patent No. 7,326,113
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IGT
`
`Petitioner,
`
`V.
`
`ARISTOCRAT TECHNOLOGIES
`
`AUSTRALIA PTY LTD.
`
`Patent Owner
`
`Case No. IPR2016—O1170
`
`Patent No. 7,326,113
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`IPR2016—O1170
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization of October 3, 2016, Petitioner IGT and Patent Owner Aristocrat
`
`Technologies Australia Pty Ltd. jointly move to terminate the present inter partes
`
`review proceeding in light of the parties’ settlement of their dispute insofar as it
`
`relates to U.S. Patent No. 7,326,113 (“the ’l 13 patent”). The parties are filing,
`
`concurrently herewith, a true and complete copy of their written Settlement
`
`Agreement dated September 29, 2016, including Exhibits A-F thereto (“Settlement
`
`Agreement”) (Confidential Exhibit 2003) in connection with this matter as
`
`required by the statute. The Settlement Agreement completely settles the parties’
`
`controversy and their dispute relating to the ’l 13 patent as between Patent Owner
`
`and IGT, the Petitioner and real party—in~interest in the present proceeding, who
`
`was named as a Counterclaim Defendant in the U.S. district court litigation
`
`captioned IGT v. Aristocrat Technologies, Inc., Case No. 2:15—cV—00473—GMN—
`
`GWF (United States District Court for the District of Nevada).
`
`The parties further jointly certify that there are no other agreements or
`
`understandings, oral or written, between Patent Owner and Petitioner, including
`
`any other collateral agreements, made in connection with, or in contemplation of,
`
`the termination of the present proceeding as set forth in 35 U.S.C. § 317(b), other
`
`than the Settlement Agreement, including Exhibits A-F thereto.
`
`
`
`IPR2016-01170
`
`The parties request that the Settlement Agreement (Confidential Exhibit
`
`2003) be treated as business confidential information and kept separate from the
`
`file of the ’l 13 patent. A joint request to treat the Settlement Agreement, including
`
`Exhibits A-F thereto, as business confidential information kept separate from the
`
`file of the involved patent pursuant to 35 U.S.C. § 317(b) is being filed
`
`concurrently herewith.
`
`Termination with Respect to Inter Partes Review Proceeding
`
`A joint motion to terminate generally “must (1) include a brief explanation
`
`as to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents at issue; (3) identify any related proceedings currently before
`
`the Office, and (4) discuss specifically the current status of each such related
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014—0O018, Paper No. 26, at *2
`
`(P.T.A.B. July 28, 2014). Each element is addressed below:
`
`As for requirement (1), termination is appropriate in this proceeding because
`
`the parties have settled their dispute with respect to the ’1l3 patent, and have
`
`agreed to terminate this inter partes review. The applicable statute, 35 U.S.C.
`
`§ 317(a), provides that an inter partes review proceeding “shall be terminated with
`
`respect to any petitioner upon the joint request of the petitioner and the patent
`
`owner, unless the Office has decided the merits of the proceeding before the
`
`
`
`IPR2016-01170
`
`request for termination is filed.” In this case, the inter partes review is not at a
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`stage in which the Office would have a complete enough record on which to make
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`a decision on the merits. Although the Patent Owner’s Preliminary Response has
`
`been filed, the Board has not determined whether to institute trial. Moreover, as
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`recognized by the rules of practice before the Board:
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`There are strong public policy reasons to favor settlement between the
`
`parties to a proceeding. The Board will be available to facilitate
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`settlement discussions,
`
`and where
`
`appropriate, may require
`
`a
`
`settlement discussion as part of the proceeding. The Board expects
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`that a proceeding will
`
`terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the
`
`proceeding.
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`Patent Office Trial Practice Guide, Fed. Register, Vol. 77, No. 157 at 48768 (Aug.
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`14, 2012). Moreover, no public interest or other factors militate against
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`termination of this proceeding.
`
`As for requirements (2) and (4), the table below identifies parties in district
`
`court litigations involving the ’ 1 l3 patent, and discusses the current status of these
`
`related litigations with respect to each party to the litigation. See Heartland
`
`Tanning, Inc., Paper No. 26, at *2.
`
`
`
`IPR2016-O1 170
`
`Current Status of Each
`
`Related Litigation With
`Respect to Each Party to the
`Litigation or Proceeding
`The parties will be filing a
`Stipulation and Order of
`Dismissal.
`
`Case Caption
`
`Parties
`
`IGT v. Aristocrat
`IGT, Aristocrat
`Technologies, Inc., Case
`Technologies,
`No. 2:15—cv—0O473—GMN—
`Inc., Aristocrat
`GWF (United States District Technologies
`Court for the District of
`Australia Pty Ltd,
`Nevada)
`Aristocrat
`International Pty
`Ltd.
`
`As for requirements (3) and (4), no other related Inter Partes Review
`
`proceedings for the ’l 13 patent are currently before the U.S. Patent & Trademark
`
`Office.
`
`Finally, as discussed above, the Settlement Agreement fully resolves all
`
`litigation and proceedings between the parties to this IPR proceeding relating to the
`
`’l 13 patent. The parties will be filing a Stipulation and Order of Dismissal in the
`
`district court litigation involving Petitioner IGT pursuant to Paragraph 2 of the
`
`Settlement Agreement.
`
`For the foregoing reasons, the parties jointly and respectfully request that the
`
`instant proceeding be terminated.
`
`
`
`IPR2016—O1170
`
`Date: October 7, 2016
`
`Respectfully submitted,
`
`By [Holby M. Abernz
`Holby M. Abern
`Registration No.: 47,372
`Adam H. Masia
`
`Registration No.: 35,602
`NEAL, GERBER & EISENBERG LLP
`
`Two North LaSa11e St., Suite 2200
`Chicago, IL 60602
`(312) 269-8000
`Attorneys for Petitioner
`
`X’
`
`
`
`E;
`
`Andrea G. Reister;
`Registration No.: 36,253
`Jay 1. Alexander
`Registration No.: 32,678
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`
`IPRZO16-01170
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 7th day of October
`
`2016, the foregoing Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37
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`C.F.R. § 42.74, was served via email by agreement of the parties on the following
`
`counsel of record for Petitioner:
`
`Holby Abern (habern@ngelaw.Com)
`Adam Masia (amasia@ngelaw.com)
`Neal, Gerber & Eisenberg LLP
`
`Date: October 7, 2016
`
`
`
`Registration No.: 36,253
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