UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC,
`Petitioner
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner
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`Case IPR2017-00292
`Patent 7,856,649
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`JOINT MOTION TO TERMINATE PROCEEDING
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`PURSUANT TO 35 U.S.C. § 317
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC,
`Petitioner
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner
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`Case IPR2017-00292
`Patent 7,856,649
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`JOINT MOTION TO TERMINATE PROCEEDING
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`PURSUANT TO 35 U.S.C. § 317
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`Case IPR2017-00292
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`The Board authorized the filing of a joint motion to terminate this and other
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`identified IPR cases on February 8, 2017. Previously, Petitioner met and conferred
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`with Patent Owner, and Patent Owner does not oppose this Motion to Terminate or
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`otherwise object to Petitioner moving to dismiss the Petition and terminate the
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`above-captioned IPR. In fact, Patent Owner joins this motion. Further, all parties
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`agree that Patent Owner will not be prejudiced by the dismissal and that the
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`dismissal will “secure the just, speedy, and inexpensive resolution” to the above-
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`captioned IPR. See 37 C.F.R. § 42.1(b). Petitioner and Patent Owner hereby move
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`for dismissal of the pending Petition and termination of the above-captioned IPR.
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`I. Good Cause Exists To Dismiss The Petition And Terminate The Above-
`Captioned IPR
`Not only is this Motion to Terminate unopposed, but there are a number of
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`other factors that weigh in favor of dismissing the pending Petition and terminating
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`this IPR proceeding. First, the above-captioned IPR is in its preliminary phase, no
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`preliminary response has been filed, and the Board has yet to reach the merits and
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`issue a decision on institution. In similar circumstances involving IPRs in such an
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`early juncture, the Board has previously granted motions to dismiss using its
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`authority under at least 37 C.F.R. §§ 42.5(a) and 42.71(a). See, e.g., Apple Inc. v.
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`Ericsson Inc., IPR2015-01905, Paper 7, (PTAB January 29, 2016) (granting
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`unopposed motion to dismiss for twelve IPR petitions); Celltrion, Inc. v. Cenetech,
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`Inc., IPR2015-01733, Paper 12, (PTAB October 6, 2015) (granting unopposed
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`Case IPR2017-00292
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`motion to dismiss petition); Under Armour, Inc. v. Adidas AG, IPR2015-01531,
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`Paper 8, (PTAB September 21, 2015) (granting unopposed motion to dismiss
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`petition); Samsung Electronics Co. LTD v. Nvidia Corporation, IPR2015-01270,
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`Paper 11 (PTAB December 9, 2015) (dismissing Petition even over the patent
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`owner’s objection).
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`Second, dismissal of the Petition in the above-captioned IPR will preserve
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`the Board’s resources and the parties’ resources while also epitomizing the Patent
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`Office’s policy of “secur[ing] the just, speedy, and inexpensive resolution” to the
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`above-captioned IPR. See 37 C.F.R. § 42.1(b). Here, the requested dismissal
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`would relieve the Board of the substantial time and resources required to consider
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`the merits, issue an institution decision, and proceed through trial (if instituted).
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`Likewise, even if Petitioner abandons the above-captioned IPR (regardless of
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`whether this Motion to Dismiss is granted), granting this Motion to Dismiss would
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`relieve the Patent Owner of the substantial expense in preparing responses,
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`presenting expert testimony, and participating in an oral hearing. As such, it would
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`be entirely proper for the Board to dismiss the pending Petition “at this early
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`juncture[] to promote efficiency and minimize unnecessary costs.” Samsung,
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`IPR2015-01270, Paper 11 at p. 4.
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`Lastly, dismissal of the Petition and termination of the above-captioned IPR
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`is a just and fair resolution. Again, all parties here agree that Patent Owner will
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`not be prejudiced by the dismissal. Moreover, the parties and the Board will
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`benefit from preserving resources that would otherwise be expended if this Motion
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`Case IPR2017-00292
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`is denied.
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`II. Identification of Parties
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`This IPR petition is related to a lawsuit filed in the Eastern District of Texas
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`(Personalized Media Communications, LLC. v. Samsung Electronics America,
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`Inc., et al., Civil Action No. 2:15-cv-01754). On February 2, 2017, the parties
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`filed a Stipulation of Dismissal of the lawsuit and the Court dismissed the action
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`on February 3, 2017. All parties involved in the ligation are as follows:
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
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`SAMSUNG ELECTRONICS CO., LTD., and
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`SAMSUNG ELECTRONICS AMERICA, INC.
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`U.S. Patent No. 7,856,649 was also asserted in Personalized Media
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`Communications, LLC v. Top Victory Electronics (Taiwan) Co. Ltd. et al., C.A.
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`No. 2:15-cv-1206 (E.D. Tex.), which has been terminated, and Personalized Media
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`Communications, LLC v. Funai Electric Co., Ltd. et al., C.A. No. 2:16-cv-105
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`(E.D. Tex.), which is pending.
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`III.
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`Identification and Status of Related Proceedings Before the USPTO
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`The following IPR petitions are related to the current IPR petition and/or the
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`related litigation:
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`Case IPR2017-00292
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`Case IPR2017-00288, Patent 7,747,217
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`Case IPR2017-00289, Patent 7,752,649
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`Case IPR2017-00290, Patent 7,752,649
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`Case IPR2017-00291, Patent 7,752,650
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`Case IPR2017-00292, Patent 7,856,649
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`Case IPR2017-00293, Patent 8,675,775
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`Case IPR2017-00294, Patent 8,711,885
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`Case IPR2017-00295, Patent 8,711,885
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`The current status of each of these IPR petitions is “Pending”. Each is prior
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`to institution and prior to any patent owner preliminary response. Motions to
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`dismiss are being filed concurrently with respect to each petition. The parties
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`agree that neither party would be prejudiced by dismissal of this and the related
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`IPR petitions.
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`Other USPTO proceedings involving U.S. Patent No. 7,752,649 include
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`IPR2017-00141 and IPR-2017-00142 (terminated), and IPR2016-00753 (trial
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`instituted). Other USPTO proceedings involving U.S. Patent No. 7,752,650
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`include IPR2017-00143 (terminated).
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`IV. Request to Keep Separate
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`Petitioner and Patent Owner are jointly submitting a settlement agreement
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`herewith and hereby request that the settlement agreement be treated as business
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`confidential information and kept separate from the files. This request is filed in
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`Case IPR2017-00292
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`accordance with 37 CFR § 42.74(c).
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`V. Conclusion
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`For at least these reasons, Petitioner and Patent Owner jointly and
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`respectfully request that the Board grant this motion to dismiss the pending
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`Petition and terminate the above-captioned IPR.
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`Respectfully submitted,
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`/Thomas A. Rozylowicz/
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` Thomas A. Rozylowicz, Reg. No. 50,620
` Fish & Richardson P.C.
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` /Dmitry Kheyfits/
` Dmitry Kheyfits, Reg. No. 57,244
` Kheyfits P.C.
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` 2/16/2017
`Date:
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`February 10, 2017
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`Date:
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`Case IPR2017-00292
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on February 16, 2017, a complete and entire copy of this Joint Motion to
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`Terminate Proceeding was provided via email to the Patent Owner by serving the
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`correspondence email address of record as follows:
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`Dmitry Kheyfits
`Andrey Belenky
`Kheyfits P.C
`1140 Avenue of the Americas, 9th Fl.
`New York, New York 10036
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`Thomas J. Scott, Jr.
`Personalized Media Communications, LLC
`11491 Sunset Hills Road, Suite 340
`Reston, Virginia 20190
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`Email: dkheyfits@kheyfits.com
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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