UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMERICAN EXPRESS TRAVEL RELATED SERVICES COMPANY, INC.,
`Petitioner,
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`v.
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`WILLIAM GRECIA,
`Patent Owner.
`
`Case IPR2017-00797
`Patent No. 8,887,308
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`AMERICAN EXPRESS TRAVEL RELATED SERVICES COMPANY, INC.,
`AND WILLIAM GRECIA’S
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN EXPRESS TRAVEL RELATED SERVICES COMPANY, INC.,
`Petitioner,
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner.
`
`Case IPR2017-00797
`Patent No. 8,887,308
`
`
`AMERICAN EXPRESS TRAVEL RELATED SERVICES COMPANY, INC.,
`AND WILLIAM GRECIA’S
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327
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`IPR2017-00797
`U.S. Patent No. 8,887,308
`Joint Motion to Terminate
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`On April 4, 2017, the Board authorized Petitioner American Express Travel
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`Related Services Company, Inc. (“American Express”) and Patent Owner William
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`Grecia (“Grecia”) (collectively, “the Parties”) to file in IPR2017-00797, IPR2017-
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`00799, and IPR2017-00801 the following: (i) a joint motion to terminate the IPRs,
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`(ii) a true copy of the written settlement agreement, and (iii) a joint request that the
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`settlement agreement be treated as business confidential information and be kept
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`separate from the files of the involved patents under 35 USC 317(b) and 37 CFR
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`42.74(c). Thus, the Parties are jointly requesting termination of this case, No.
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`IPR2017-00797.
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`I.
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`Brief Explanation as to why Termination is Appropriate
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`
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`American Express and Grecia have settled their dispute with respect to the patent
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`at issue. Because no final written decision has yet been entered and American Express
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`and Grecia are jointly making this motion, termination of this IPR review as to
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`American Express is appropriate, as the Board has not yet “decided the merits of the
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`proceeding.” 35 U.S.C. § 327(a).
`
`
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` Terminating this IPR review promotes the congressional goal to establish a more
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`efficient and streamlined patent system that, inter alia, limits unnecessary and
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`counterproductive litigation costs. See “Changes to Implement Inter Partes Review
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`Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered
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`
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`2
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`
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`IPR2017-00797
`U.S. Patent No. 8,887,308
`Joint Motion to Terminate
`Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680 (August 14,
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`2012). Moreover, terminating post-grant proceedings, such as this IPR review, upon
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`settlement fosters an environment that promotes settlements, thereby creating a timely,
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`cost-effective alternative to litigation. A decision to continue the present IPR review
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`would therefore be contrary to the congressional goal of speedy dispute resolution.
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`II.
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`Status of Related Litigation
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`
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`The related District Court litigation between the Parties, No. 1:15-cv-09059-RJS
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`(S.D.N.Y), has been dismissed with prejudice. A copy of the court’s order dismissing
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`that action is being filed concurrently herewith as Exhibit 1009.
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`III. Request to Treat Settlement Agreement as Confidential Information
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`The Parties’ settlement agreement has been made in writing, and a true and
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`correct copy is being filed concurrently herewith as Exhibit 1010 pursuant to 35 U.S.C.
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`§ 327(b), along with the Parties’ joint request that the settlement agreement be treated
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`as business confidential information, and be kept separate from the file of the involved
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`patent.
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`IV. Conclusion
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`For at least these reasons, American Express and Grecia respectfully request
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`termination of this case.
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`3
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`Respectfully submitted,
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`/ David M. Tennant/
`David M. Tennant, Reg. No. 48,362
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`WHITE & CASE, LLP
`701 13th St. NW, #600
`Washington, DC 20005
`(202) 626-3684
`(202) 639-9355 (fax)
`dtennant@whitecase.com
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`Counsel for Petitioner American Express
`Travel Related Services Company, Inc.
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`Date: April 10, 2017
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`IPR2017-00797
`U.S. Patent No. 8,887,308
`Joint Motion to Terminate
`
`/ Isaac Rabicoff/
`Isaac Rabicoff , Reg. No. 74,147
`
`Rabicoff Law LLC
`73 W Monroe St
`Chicago, IL 60603
`isaac@rabilaw.com
`(773) 669-4590
`
`
`Counsel for Patent Owner
`William Grecia
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`4
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`PETITIONER’S UPDATED EXHIBIT LIST
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`IPR2017-00797
`U.S. Patent No. 8,887,308
`Joint Motion to Terminate
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`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
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`Ex. 1004
`Ex. 1005
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`Ex. 1006
`Ex. 1007
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`Ex. 1008
`Ex. 1009
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`Ex. 1010
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`Description
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`U.S. Patent No. 8,887,308 (“’308 patent”)
`Declaration of Dr. Richard Kramer (“Kramer”)
`Grecia v. Amazon.com, No. 2:14–cv–00530 (W.D. Wash. Dec.
`22, 2014) (Joint claim construction statement by Patent Owner
`and Amazon), Ex. C
`U.S. Pub. No. 2007/0156726 (“Levy”)
`Business Wire, “Ivex Announces ViewOps Internet Video
`Service; Allows Business Managers to View and Manage
`Operations Online” (May 2, 2000)
`Ivex, ViewOps – User Manual (2000)
`Excerpts of File History of U.S. Patent No. 8,402,555
`(“’555FH”)
`File History of U.S. Patent No. 8,887,308 (“’308 FH”)
`Order of Dismissal With Prejudice, William Grecia v. American
`Express Company, Civil Action No. 1:15-cv-09059-RJS
`“Board Only” Confidential Settlement and Patent License
`Agreement between William Grecia and American Express
`Company
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`IPR2017-00797
`U.S. Patent No. 8,887,308
`Joint Motion to Terminate
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that pursuant to agreement by Petitioner and
`Patent Owner the following documents were served by electronic mail on April 10,
`2017,
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS
`BUSINESS CONFIDENTIAL INFORMATION UNDER
`35 U.S.C. § 327(b)
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`Ex. 1009 ORDER OF DISMISSAL WITH PREJUDICE
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`Pursuant to agreement by Petitioner and Patent Owner, Ex. 1010
`Settlement and Patent License Agreement was served on only the following party
`in order to preserve confidentiality:
`
`
`Isaac Rabicoff
`Rabicoff Law LLC
`isaac@rabilaw.com
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`Respectfully submitted,
`/ David M. Tennant/
`David M. Tennant
`White & Case LLP
`Attorney for Petitioners American Express
`Travel Related Services
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`Date: April 10, 2017
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