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IPR2016-01321
`Patent 6,442,261
`
`
`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.
`VOXATHON, LLC
`Patent Owner
`
`
`
`IPR2016-01321
`Patent 6,442,261
`
`
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a)
`
`
`

`
`IPR2016-01321
`Patent 6,442,261
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Unified Patents Inc.
`
`
`
`(“Unified”) and Voxathon, LLC (“Voxathon”) jointly request termination of
`
`the Inter Partes Review of U.S. Patent 6,442,261 in IPR2016-01321.
`
`Petitioner and Patent Owner have entered into a written confidential
`
`settlement agreement that fully resolves all underlying disputes between the
`
`parties, including IPR2016-01321 against U.S. Patent 6,442,261. The
`
`Parties are concurrently filing a copy of the Settlement Agreement as
`
`EX1009 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 EX1009 represents a true and accurate copy of the agreement between
`
`the parties that resolves the present proceeding.
`
`On December 7, 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 December 8, 2016, the Board
`
`authorized the filing of the requested joint motion to terminate this
`
`proceeding as to both parties. Accordingly, Petitioner and Patent Owner
`
`

`
`IPR2016-01321
`Patent 6,442,261
`
`
`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
`
`

`
`
`environment that promotes settlements, creating a timely, cost-effective
`
`IPR2016-01321
`Patent 6,442,261
`
`alternative to litigation.
`
`Additionally, termination of this IPR is appropriate as the Board has
`
`not reached an institution decision yet and has not “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 September 8, 2016. The Board has yet to act on the petition. 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, or to
`
`render a Final Decision. Furthermore, no other party’s rights will be
`
`prejudiced by the termination of this proceeding.
`
`
`
`The district court litigations filed are all administratively closed and
`
`on appeal in Voxathon LLC v. FCA US LLC et al., No. 16-614 (Fed. Cir.
`
`Filed Feb. 24, 2016). Therefore, Unified and Voxathon respectfully request
`
`termination of the Inter Partes Review IPR2016-01321 of U.S. Patent
`
`6,442,261.
`
`
`
`

`
`
`Date: December 12, 2016
`
` Respectfully submitted,
`
`IPR2016-01321
`Patent 6,442,261
`
`___________________________
`Jonathan Stroud, Reg. No. 72,518
`Chief Patent Counsel
`Unified Patents Inc.
`
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-01321
`Patent 6,442,261
`
`
`
`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
`
`6,442,261 was served on December 12, 2016 via electronic mail directed to
`
`the attorney of record for
`
`the patent at
`
`the following address:
`
`gary.sorden@klemchuk.com, kirby.drake@klemchuk.com, and a courtesy
`
`copy to dbennett@directionip.com. Patent Owner has consented to
`
`electronic service.
`
`
`
`Date: December 12, 2016 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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