`Patent 6,442,261
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`Filed on behalf of Unified Patents Inc.
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`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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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________________
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`UNIFIED PATENTS INC.
`Petitioner
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`v.
`VOXATHON, LLC
`Patent Owner
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`
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`IPR2016-01321
`Patent 6,442,261
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`
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`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a)
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`IPR2016-01321
`Patent 6,442,261
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Unified Patents Inc.
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`(“Unified”) and Voxathon, LLC (“Voxathon”) jointly request termination of
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`the Inter Partes Review of U.S. Patent 6,442,261 in IPR2016-01321.
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`Petitioner and Patent Owner have entered into a written confidential
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`settlement agreement that fully resolves all underlying disputes between the
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`parties, including IPR2016-01321 against U.S. Patent 6,442,261. The
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`Parties are concurrently filing a copy of the Settlement Agreement as
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`EX1009 along with a request to treat it as confidential business information
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`pursuant to 35 U.S.C. § 317(b). The undersigned represents that there are no
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`other agreements, oral or written, between the parties made in connection
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`with, or in contemplation of, the termination of the present proceeding and
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`that EX1009 represents a true and accurate copy of the agreement between
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`the parties that resolves the present proceeding.
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`On December 7, 2016, the Parties informed the Board of the
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`settlement via e-mail and requested authorization to file a joint motion to
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`terminate the proceeding with respect to both the Patent Owner and the
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`Petitioner. As set forth in an e-mail dated December 8, 2016, the Board
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`authorized the filing of the requested joint motion to terminate this
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`proceeding as to both parties. Accordingly, Petitioner and Patent Owner
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`IPR2016-01321
`Patent 6,442,261
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`jointly request termination of the present proceeding.
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`Public policy favors terminating the present inter partes review
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`proceeding. Congress and federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v.
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`August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to
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`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d
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`1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert.
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`denied, 479 U.S. 950 (1986). The Federal Circuit places a particularly strong
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`emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
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`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
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`antagonism and hostility between parties). And, the Board’s Trial Practice
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`Guide stresses that “[t]here are strong public policy reasons to favor
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`settlement between the parties to a proceeding.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Ending this IPR early promotes the Congressional goal of establishing
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`a more
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`efficient patent
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`system by
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`limiting unnecessary
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`and
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`counterproductive costs. See Changes to Implement Inter Partes Review
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`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
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`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
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`Permitting termination as to all parties provides certainty and fosters an
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`environment that promotes settlements, creating a timely, cost-effective
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`IPR2016-01321
`Patent 6,442,261
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`alternative to litigation.
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`Additionally, termination of this IPR is appropriate as the Board has
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`not reached an institution decision yet and has not “decided the merits of the
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`proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48756, 48768 (Aug. 14, 2012). Unified filed its petition for inter partes
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`review on September 8, 2016. The Board has yet to act on the petition. The
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`parties have now settled their dispute, and have reached agreement to
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`terminate this inter partes review. The USPTO can conserve its resources
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`through terminating the proceedings now, removing the need for the Board
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`to further consider the arguments, to issue an Institution Decision, or to
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`render a Final Decision. Furthermore, no other party’s rights will be
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`prejudiced by the termination of this proceeding.
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`
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`The district court litigations filed are all administratively closed and
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`on appeal in Voxathon LLC v. FCA US LLC et al., No. 16-614 (Fed. Cir.
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`Filed Feb. 24, 2016). Therefore, Unified and Voxathon respectfully request
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`termination of the Inter Partes Review IPR2016-01321 of U.S. Patent
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`6,442,261.
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`Date: December 12, 2016
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` Respectfully submitted,
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`IPR2016-01321
`Patent 6,442,261
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`___________________________
`Jonathan Stroud, Reg. No. 72,518
`Chief Patent Counsel
`Unified Patents Inc.
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`IPR2016-01321
`Patent 6,442,261
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Joint Motion
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`to Terminate the Proceeding for Inter Partes Review of U.S. Patent
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`6,442,261 was served on December 12, 2016 via electronic mail directed to
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`the attorney of record for
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`the patent at
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`the following address:
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`gary.sorden@klemchuk.com, kirby.drake@klemchuk.com, and a courtesy
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`copy to dbennett@directionip.com. Patent Owner has consented to
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`electronic service.
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`Date: December 12, 2016 Respectfully submitted,
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`___________________________
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`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