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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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` ____________
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`RELATIVITY ODA LLC,
`Petitioner
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`v.
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`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner
`
`____________
`
`IPR2017-00899
`Patent 7,809,717
` ____________
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`1
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, Patent Owner and
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`Petitioner jointly request termination of Inter Partes Review No. IPR2017-00899.
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`The Board authorized the parties on December 4, 2017 to file this motion and a
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`request that the settlement agreement be treated as business confidential
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`information and be kept separate from the file of the involved patent.
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`Patent Owner and Petitioner respectfully submit that termination is
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`appropriate because they have entered into a confidential written agreement fully
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`resolving the dispute involving the patent at issue in the above-captioned Inter
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`Partes Review and the litigation between Patent Owner and Petitioner.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the parties
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`are filing herewith a true copy of the confidential written agreement along with a
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`request to treat it as business confidential information and keep it separate from the
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`file of the involved patent. See Confidential Exhibit EX2003. The parties represent
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`that there are no other agreements between the parties made in connection with, or
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`in contemplation of, the termination of the present proceeding and that EX2003
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`represents a true and accurate copy of the agreement between the parties that
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`resolves this proceeding.
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`Patent Owner has filed an unopposed motion to dismiss with prejudice the
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`Federal Circuit appeal styled, Blackbird Tech LLC d/b/a Blackbird Technologies v.
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`Advanced Discovery Inc. et al., Appeal No. 17-2317 (Fed. Cir.), in which the
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`2
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`patent-at-issue had been asserted. Patent Owner represents that, after the Federal
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`Circuit dismisses the aforementioned appeal, there will be no pending federal court
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`litigations in which the patent-at-issue has been asserted. The patent-at-issue is not
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`presently the subject of any other Inter Partes Review Petitions.
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`This request is proper because of the early stage of this proceeding. The
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`Inter Partes Review in this matter was recently instituted by the Board on
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`September 11, 2017, Patent Owner has not yet filed its Patent Owner Response,
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`and no final written decision on the merits has been entered. Further, this request
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`is proper because of the public policy favoring settlement of litigation and out-of-
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`court resolution of proceedings before the Board. For at least these reasons, Patent
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`Owner and Petitioner submit that termination is appropriate.
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`3
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`Dated: December 7, 2017
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`Respectfully submitted,
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`By: /s/ Miguel Bombach
`Bing Ai (Reg. No. 43,312)
`Miguel Bombach (Reg. No. 68,636)
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`
`Tim Carroll
`Steven Lubezny
`PERKINS COIE LLP
`131 S. Dearborn St., Ste. 1700
`Chicago, IL 60603
`
`Email: PerkinsServiceBlackBirdIPR
`@perkinscoie.com
`
`
`Counsel for Petitioner
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`
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`By: /s/ Walter D. Davis, Jr
`Walter D. Davis, Jr. (Reg. No.
`45,137)
`Wayne M. Helge (Reg. No. 56,905)
`Aldo Noto (Reg. No. 35,628)
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: wdavis@dbjg.com
`Email: whelge@dbjg.com
`Email: anoto@dbjg.com
`
`Counsel for Patent Owner
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`4
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`CERTIFICATE OF SERVICE
`UNDER 37 C.F.R. § 42.105(a)
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned
`certifies that on December 7, 2017, the foregoing document was filed in E2E
`and was served by electronic notice via the E2E system, as agreed to by the
`parties.
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`
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`
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`Bing Ai (Reg. No. 43,312)
`Miguel Bombach (Reg. No. 68,636)
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`
`Tim Carroll
`Steven Lubezny
`PERKINS COIE LLP
`131 S. Dearborn St., Ste. 1700
`Chicago, IL 60603
`
`Email: PerkinsServiceBlackBirdIPR
`@perkinscoie.com
`
`
`Counsel for Petitioner
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`
`
`Walter D. Davis, Jr. (Reg. No.
`45,137)
`Wayne M. Helge (Reg. No. 56,905)
`Aldo Noto (Reg. No. 35,628)
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: wdavis@dbjg.com
`Email: whelge@dbjg.com
`Email: anoto@dbjg.com
`
`Counsel for Patent Owner
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`By: /s/ Walter D. Davis, Jr.
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` Walter D. Davis, Jr. (Reg. No. 45,137)
`
` Lead Counsel for Patent Owner
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`5
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