`Tel: 571-272-7822
`
`
`Paper 12
`November 22, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MIPOX CORPORATION,
`Petitioner,
`
`v.
`
`INTERNATIONAL TEST SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00938
`Patent 6,777,966
`____________
`
`
`
`
`JOINT MOTION TO TERMINATE THE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`Case IPR2017-00938
`Patent 6,777,966
`
`I.
`
`Joint Motion to Terminate Proceeding
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Mipox
`
`Corporation and Patent Owner International Test Solutions, Inc. (“the Parties”)
`
`jointly request the termination of the inter partes review of U.S. Patent No.
`
`6,777,966, Case No. IPR2017-00938, without prejudice to either party.
`
`This inter partes review has been instituted, but the proceeding is still at an
`
`early stage, before the Patent Owner’s response has been submitted or any
`
`deposition has occurred. The parties have settled their dispute and have agreed to
`
`request the termination of the above captioned inter partes review proceeding. A
`
`Settlement Agreement between the Parties has been made in writing, and a true and
`
`correct copy of the Settlement Agreement is being filed concurrently with the
`
`present motion. Also filed concurrently with this motion is a Joint Request to
`
`Treat Settlement Agreement as Business Confidential Information, to be kept
`
`separate from the file of the involved patent pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c). The Parties certify that no other concurrent or auxiliary
`
`agreements beyond what is in the Settlement Agreement have been reached
`
`between the Parties in contemplation of terminating the instant proceeding.
`
`II. Conclusion
`
`For the foregoing reasons, the Parties respectfully request that their joint
`
`motion to terminate proceeding be granted.
`
`
`
`2
`
`
`
`
`
`
`
`/ Timothy W. Lohse /
`Timothy W. Lohse (Reg. No. 35,255)
`Blake W. Jackson (Reg. No. 66,272)
`
`DLA Piper LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303
`
`Tel: (650) 833-2055
`Fax: (650) 687-1148
`Email: timothy.lohse@dlapiper.com
`Email: blake.jackson@dlapiper.com
`
`Pejman F. Sharifi (Reg. No. 45,097)
`
`Winston & Strawn LLP
`200 Park Avenue
`New York, NY 10166-4193
`
`Tel: (212) 294-2603
`Fax: (212) 294-4700
`Email: psharifi@winston.com
`
`Attorneys for Patent Owner
`
`Case IPR2017-00938
`Patent 6,777,966
`
`Date: November 22, 2017
`
` /
`
`
`
`
` Thomas J. Donovan /
`Thomas J. Donovan (Reg. No. 33,231)
`Mark Hagedorn (Reg. No. 44,731)
`
`Barnes & Thornburg LLP
`One North Wacker Dr., Suite 4400
`Chicago, Illinois 60606-2833
`
`Tel: (312) 357-1313
`Fax: (312) 759-5646
`Email: tdonovan@btlaw.com
`Email: mhagedorn@btlaw.com
`
`Attorneys for Petitioner
`
`
`
`3
`
`
`
`Case IPR2017-00938
`Patent 6,777,966
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`I hereby certify that, on November 22, 2017, I caused a true and correct copy
`
`of the foregoing to be served by consent of the petitioner via email on the
`
`following counsel of record for Patent Owner:
`
`
`
`
`
`
`
`
`
`Timothy W. Lohse (Reg. No. 35,255)
`Blake W. Jackson (Reg. No. 66,272)
`
`DLA Piper LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303
`
`Tel: (650) 833-2055
`Fax: (650) 687-1148
`Email: timothy.lohse@dlapiper.com
`Email: blake.jackson@dlapiper.com
`
`Pejman F. Sharifi (Reg. No. 45,097)
`
`Winston & Strawn LLP
`200 Park Avenue
`New York, NY 10166-4193
`
`Tel: (212) 294-2603
`Fax: (212) 294-4700
`Email: psharifi@winston.com
`
`
`
`
`Date: November 22, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`/ Thomas J. Donovan /
`Thomas J. Donovan
`
`
`
`
`
`
`
`
`
`
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