UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`BLACKBERRY CORP.,
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`Petitioner,
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`v.
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`OPTIS WIRELESS TECHNOLOGY, LLC,
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`Patent Owner.
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`____________
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`Case IPR2017-00749
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`U.S. Patent No. 8,064,919
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`____________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BLACKBERRY CORP.,
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`Petitioner,
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`v.
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`OPTIS WIRELESS TECHNOLOGY, LLC,
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`Patent Owner.
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`____________
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`Case IPR2017-00749
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`U.S. Patent No. 8,064,919
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`____________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
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`Pursuant to 35 U.S.C. § 317(a) and authorization of the Board granted on
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`April 28, 2017, Petitioner BlackBerry Corp. (“BlackBerry”) and Patent Owner
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`Optis Wireless Technology, LLC (“Optis”) jointly request termination of IPR2017-
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`00749, which is directed to U.S. Patent No. 8,064,919 (“the ‘919 Patent”).
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`This inter partes review was filed January 23, 2017. A Preliminary
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`Response has not been filed by the Patent Owner and no decision regarding
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`institution of the proceeding has issued. Further, no final written decision on the
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`merits of this review proceeding has been entered. The parties have settled their
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`dispute, and have reached agreement to terminate this inter partes review. As there
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`are no other petitioners in this proceeding, and the proceeding is still at a very early
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`stage, the parties respectfully submit that termination of this proceeding is
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`appropriate.
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`The parties’ Settlement Agreement has been made in writing, and a true
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`copy of same is attached hereto as Exhibit 1012.1 The parties further jointly certify
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`that there is no other agreement or understanding between them, including any
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`other collateral agreements, made in connection with, or in contemplation of, the
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`termination of the instant proceeding as set forth in 35 U.S.C. § 317(b). The parties
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`desire that the Settlement Agreement be maintained as business confidential
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`1 The Settlement Agreement is being filed electronically via the Patent Trial and
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`Appeals Board’s E2E as “Parties and Board Only.”
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`information under 37 C.F.R. § 42.74(c) and a separate joint request to that effect is
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`IPR2017-00749
`Joint Motion to Terminate Proceeding
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`being filed concurrently.
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`As stated in 35 U.S.C. § 317(a), because Petitioner and Patent Owner jointly
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`request this termination as to Petitioner, no estoppel under 35 U.S.C. § 315(e) shall
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`attach to Petitioner.
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`I. Reasons Why Termination is Appropriate
`Termination with respect to Petitioner is proper under 35 U.S.C. § 317(a)
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`because the parties are jointly requesting termination and the Office has not yet
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`“decided on the merits of the proceeding before the request for termination is
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`filed.” Here, no decision on the merits has been made. Accordingly, the parties
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`are entitled to terminate this proceeding as to Petitioner under Section 317(a) upon
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`their joint request.
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`The parties respectfully submit that termination of this proceeding is
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`appropriate because (a) this proceeding is at a very early stage and no motions are
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`outstanding; (b) the parties have reached agreement to end their dispute concerning
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`the ‘919 Patent; (c) the parties have agreed to dismiss the related district court
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`litigation with respect to the ‘919 Patent; (d) the parties agree that this Inter Partes
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`Review should be terminated; and (e) termination of this proceeding will preserve
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`the Board’s resources and obviate the need for any more Board involvement in this
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`matter.
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`IPR2017-00749
`Joint Motion to Terminate Proceeding
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`II. Related District Court Litigation and Status
`The ‘919 patent was asserted in PanOptis Patent Management, LLC v.
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`BlackBerry Limited, No. 2:16-cv-00062-JRG-RSP (E. D. Tex.). This litigation
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`proceeding has been dismissed as part of the parties’ Settlement Agreement.
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`There are no other current litigation proceedings involving the subject patent.
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`III. Related Proceedings Before the Office
`No other proceedings related to the ‘919 Patent are pending.
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`Dated: May 2, 2017
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`Respectfully submitted,
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`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
`OBLON, MCCLELLAND, MAIER
`& NEUSTADT, LLP
`1940 Duke Street
`Alexandria, Virginia 22314
`(703) 412-6466
`cpdocketmattson@oblon.com
`Counsel for Petitioner
` BlackBerry Corp.
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`/Barry J. Bumgardner/
`Barry J. Bumgardner
`Registration No. 38,397
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`(817) 377-3494
`barry@nelbum.com
`Counsel for Patent Owner
` Optis Wireless Technology, LLC
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`IPR2017-00749
`Joint Motion to Terminate Proceeding
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of JOINT
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`MOTION TO TERMINATE PROCEEDING with EXHIBIT 1012 on the counsel
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`of record for the Patent Owner by filing this document through the PTABE2E
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`System as well as delivering a copy via electronic mail to the following address:
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`Barry J. Bumgardner
`Brent N. Bumgardner
`NELSON BUMGRDNER, P.C.
`barry@nelbum.com
`brent@nelbum.com
`optis-IPR@nelbum.com
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`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
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`Dated: May 2, 2017
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