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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SONOS, INC.,
`Petitioner
`
`v.
`
`D&M HOLDINGS INC.,
`Patent Owner
`___________________
`
`Case No. IPR2017-01043
`U.S. Patent 6,473,441
`___________________
`
`JOINT MOTION TO TERMINATE
`UNDER 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2017-01043
`U.S. Patent 6,473,441
`JOINT MOTION TO TERMINATE
`UNDER 37 C.F.R. § 42.74
`Pursuant to 37 C.F.R. § 42.74 and the Board’s e-mail of September 11, 2017
`
`authorizing the filing of this joint motion, Petitioner (Sonos, Inc.) and Patent
`
`Owner (D&M Holdings Inc.) (collectively, “the Parties”) jointly request
`
`termination of Inter Partes Review No. IPR2017-01043 involving U.S. Patent
`
`6,473,441 (“the ‘441 Patent”) pursuant to the Parties’ agreement.
`
`As required by 37 C.F.R. § 42.74(b), the Parties are filing concurrently
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`herewith as Exhibit 1019 a copy of the Parties’ Stipulation of Dismissal of the ‘441
`
`Patent filed in the corresponding district court litigation. The Parties jointly certify
`
`that there is no other written or oral collateral agreement or understanding made in
`
`connection with, or in contemplation of, the termination of the instant proceeding.
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`
`The Parties jointly request that the Board terminate this IPR as to both
`
`Parties.
`
`II.
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`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`Termination of this proceeding as to both Parties is appropriate because: (i)
`
`the trial is at a sufficiently early stage and the record is incomplete; (ii) the Parties
`
`have settled their disputes with regard to the ‘441 Patent in the related litigation,
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`2
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`IPR2017-01043
`U.S. Patent 6,473,441
`and the Parties to this inter partes review agree that it should be terminated; and
`
`(iii) public policy strongly favors settlement.
`
`A. Termination With Respect to Petitioner
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`
`chapter shall be terminated with respect to any petitioner upon the joint request of
`
`the petitioner and the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” Here, termination with
`
`respect to Petitioner is proper because the Parties are jointly requesting termination
`
`and the Office has not yet “decided the merits of the proceeding before the request
`
`for termination is filed,”. Id.; see also Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012). Moreover, as set forth in 35 U.S.C. § 317(a),
`
`because Petitioner and Patent Owner jointly request this termination, no estoppel
`
`under 35 U.S.C. § 315(e) shall attach to Petitioner.
`
`B. Termination With Respect to Patent Owner
`Termination of this proceeding with respect to Patent Owner is supported by
`
`the Petitioner and is appropriate for at least the following reasons.
`
`Incomplete Record
`1.
`The record in this proceeding is incomplete, and the Board has not yet
`
`decided the merits of this proceeding, let alone issued a decision whether to
`
`3
`
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`IPR2017-01043
`U.S. Patent 6,473,441
`institute these proceedings. Patent Owner did file a Preliminary Response on July
`
`6, 2017. There are no other outstanding motions before the Board.
`
`No Further Participation by Petitioner
`2.
`Upon termination of this proceeding with respect to Petitioner, no petitioner
`
`shall remain. Petitioner hereby informs the Board that Petitioner will not file any
`
`additional papers in this proceeding and will not further participate further in this
`
`proceeding in any respect before the Board.
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`Because the record is currently incomplete and will not be further
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`developed, termination as to all Parties is favored. Patent Owner notes that in the
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`absence of Petitioner, it is unclear how these proceedings could properly proceed.
`
`Under these circumstances, there is every reason to honor the Parties’ wishes
`
`to terminate as to both Parties.
`
`3. Maintaining this Inter Partes Review Would Discourage
`Settlements and Waste Judicial Resources
`Congress and federal courts have expressed a strong interest in encouraging
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`settlement of disputes. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
`
`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
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`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986)
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`(“The law favors settlement of cases.”), cert denied, 479 U.S. 950 (1986); and 35
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`U.S.C. § 317(a). Public policy strongly favors allowing parties to settle in all
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`respects. Indeed, the USPTO’s Office Patent Trial Practice Guide expressly states:
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`4
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`IPR2017-01043
`U.S. Patent 6,473,441
`“N. Settlement. There are strong public policy reasons to favor
`settlement between the parties to a proceeding. The Board will be
`available to facilitate settlement discussions, and where appropriate,
`may require a settlement discussion as part of the proceeding. The
`Board expects that a proceeding will terminate after the filing of a
`settlement agreement, unless the Board has already decided the merits
`of the proceeding.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48768 (emphasis added).
`
`Thus, maintaining this review in any respect after the Parties’ agreement
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`would be contrary to public policy and would discourage future settlements by
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`removing a significant motivation for settlement; eliminating litigation risk by
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`resolving the parties’ disputes and ending the pending proceedings between them.
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`Moreover, courts endorse settlement to preserve judicial resources.
`
`Maintaining this proceeding in any respect after the Parties have settled their
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`dispute would waste, rather than conserve, USPTO judicial resources and the
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`Federal Circuit. In addition, Patent Owner will be prejudiced if this proceeding is
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`not terminated as requested, with respect to additional attorneys’ fees and costs that
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`would need to be incurred in connection with the proceedings.
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`III. CONCLUSION
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`Accordingly, the Parties respectfully request termination of this proceeding
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`in its entirety as to all Parties. Any reasonable weighing of the issues/factors
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`5
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`IPR2017-01043
`U.S. Patent 6,473,441
`discussed herein heavily favors termination of the entire proceeding as to all
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`Parties.
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`
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`Respectfully submitted,
`Dated: September 13, 2017
`
`
`
`
`
`
`
`
`Respectfully submitted,
`Dated: September 13, 2017
`
`
`
`By: /George Lee/
`George I. Lee, Reg. No. 39,269
`Lee Sullivan Shea & Smith LLP
`224 N. Desplaines St.
`Suite 2500
`Chicago, IL
`(312) 754-9606 (telephone)
`(312) 754-9603
`lee@ls3ip.com
`Counsel for Petitioner
`
`By: / Wasif Qureshi /
`
`
`
`Christopher J. Rourk, Lead Counsel
`Reg. No. 39,348
`crourk@jw.com
`Jackson Walker LLP
`2323 Ross Avenue, Suite 600
`Dallas, TX 75201
`T: 214-953-5990
`F: 214-661-6604
`
`Wasif H. Qureshi, Backup Counsel
`Reg. No. 51,048
`wqureshi@jw.com
`Jackson Walker LLP
`1401 McKinney Street, Suite 1900
`Houston, TX 77010
`T: 713-752-4521
`F: 713-308-4121
`
`Counsel for Patent Owner
`
`6
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Joint Motion
`
`IPR2017-01043
`U.S. Patent 6,473,441
`
`to Terminate and Exhibit 1019 was served on September 13, 2017, via email
`
`directed to counsel of record for the Patent Owner at the following:
`
`
`Christopher J. Rourk
`crourk@jw.com
`
`Wasif H. Qureshi
`wqureshi@jw.com
`
`
`Dated: September 13, 2017
`
`
`
`
`
`
`
`
`
`
`By: /George Lee/
`George I. Lee, Reg. No. 39,269
`Lee Sullivan Shea & Smith LLP
`224 N. Desplaines St.
`Suite 2500
`Chicago, IL
`(312) 754-9606 (telephone)
`(312) 754-9603
`lee@ls3ip.com
`Counsel for Petitioner
`
`
`
`7
`
`
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