`US Patent 6,079,854
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`DOCKET: 2211726-00137
`Filed on behalf of Unified Patents Inc.
`By: David L. Cavanaugh, Reg. 36,476
`Daniel V. Williams, Reg. 45,221
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`Jonathan Stroud, Reg. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, DC, 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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`Unified Patents Inc.
`Petitioner
`v.
`Jakuta Diodes, LLC
`Patent Owner
`IPR2017-00379
`Patent 6,079,854
`JOINT MOTION TO DISMISS AND
`TERMINATE THE PROCEEDING UNDER 37 CFR 42.71(a)
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`Pursuant to 37 CFR 42.71(a), Petitioner Unified Patents Inc.
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`IPR2017-00379
`US Patent 6,079,854
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`(“Unified”) and Patent Owner Jakuta Diodes LLC (“Jakuta”) jointly request
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`termination of the Inter Partes Review of U.S. Patent 6,079,854 in IPR2017-
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`00379.
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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 IPR2017-00379 against U.S. Patent 6,079,854. The
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`Parties are concurrently filing a copy of the Settlement Agreement as
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`EX1017 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 EX1017 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 March 3, 2017, the Parties informed the Board of the settlement
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`via e-mail and requested authorization to file a joint motion to terminate the
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`proceeding with respect to both the Patent Owner and the Petitioner. As set
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`forth in an e-mail dated March 6, 2017, the Board authorized the filing of the
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`requested joint motion to terminate this proceeding as to both parties.
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`Accordingly, Petitioner and Patent Owner jointly request termination of the
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`present proceeding.
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`IPR2017-00379
`US Patent 6,079,854
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`Public policy favors dismissing and terminating the present inter
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`partes review petition. Congress and federal courts have expressed a strong
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`interest in encouraging settlement in litigation. See, e.g., Delta Air Lines,
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`Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.]
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`68 is to encourage the settlement of litigation.”); Bergh v. Dept. of Transp.,
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`794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of
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`cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit places a
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`particularly strong emphasis on settlement. See Cheyenne River Sioux Tribe
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`v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors
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`settlement to reduce antagonism and hostility between parties). And, the
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`Board’s Trial Practice Guide stresses that “[t]here are strong public policy
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`reasons to favor settlement between the parties.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Dismissing this IPR petition and terminating review early promotes
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`the Congressional goal of establishing a more efficient patent system by
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`limiting unnecessary and counterproductive costs. See Changes
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`to
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`Implement
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`Inter Partes Review Proceedings, Post-Grant Review
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`Proceedings, and Transitional Program for Covered Business Method
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`Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
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`Additionally, dismissing of this IPR is appropriate as the Board has
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`IPR2017-00379
`US Patent 6,079,854
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`not yet “decided the merits of the proceeding.” See, e.g., Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Unified filed its
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`petition for inter partes review on December 7, 2016. The Board has not yet
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`made a decision on institution and the patent owner’s optional preliminary
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`response is not yet due. No depositions have taken place and neither the
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`Patent Owner nor the Petitioner have submitted any substantive briefing
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`post-institution. The parties have now settled their dispute, and have
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`reached agreement to dismiss this inter partes review petition and terminate
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`its consideration. The USPTO can conserve its resources through
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`terminating the proceedings now, removing the need for the Board to further
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`consider the arguments, to issue an Institution Decision, or to render a Final
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`Decision. Furthermore, no other party’s rights will be prejudiced by the
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`termination of this proceeding.
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`The related cases at the district court, which were previously listed in
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`the mandatory notices, are either in the process of, or have all been,
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`administratively terminated.
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`Therefore, Unified and Jakuta respectfully request termination of the
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`Inter Partes Review IPR2017-00379 of U.S. Patent 6,079,854.
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`Date: March 6, 2017
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` Respectfully submitted,
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`IPR2017-00379
`US Patent 6,079,854
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`___________________________
`Jonathan Stroud, Reg. 72,518
`Chief Patent Counsel
`Unified Patents Inc.
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`/s/ Obi Iloputaife
`___________________________
` Obi I. Iloputaife, 45,677
` Cotman IP Law Group, PLC
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`IPR2017-00379
`US Patent 6,079,854
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Joint
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`Motion to Terminate the Proceeding for Inter Partes Review of U.S. Patent
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`6,079,854 was served on March __, 2017 via electronic mail at the following
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`address: uspto.docketing@cotmanip.com. Patent Owner has consented to
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`electronic service.
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`
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`Date: March __, 2017
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` Respectfully submitted,
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`___________________________
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`Jonathan Stroud, Reg. 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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