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`IPR2017-01069
` U.S. PATENT NO. 7,275,186
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`SanDisk LLC
`Petitioner,
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`v.
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`MEMORY TECHNOLOGIES, LLC
`Patent Owner
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`Patent No. 7,275,186
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`Inter Partes Review No. IPR2017-01069
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74 AND
`JOINT REQUEST TO KEEP PAPERS SEPARATE
`AS BUSINESS CONFIDENTIAL INFORMATION
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`IPR2017-01069
` U.S. PATENT NO. 7,275,186
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.72, Patent Owner Memory
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`Technologies, LLC and Petitioner SanDisk LLC jointly request termination of
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`Inter Partes Review No. IPR2017-01069, which is directed to U.S Pat. No.
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`7,275,186 (the “Challenged Patent”). The Parties additionally request that the
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`settlement agreement be treated in its entirety as Business Confidential
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`Information.
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`I. Request to Terminate
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`This proceeding is in the preliminary phase. A filing date was accorded on
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`March 29, 2019. Patent Owner has not filed a preliminary response, and no Trial
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`has yet been instituted. The Parties jointly requested permission to file this motion
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`on June 16, 2017 and received authorization to file the motion on June 27, 2017.
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`The Parties jointly submit that termination is appropriate because they have
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`reached an agreement resolving their disputes involving the Challenged Patent.
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`More specifically, the Parties have agreed to settle and dismiss their related district
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`court litigation (Memory Technologies, LLC v. SanDisk LLC, et al., No. 8:16-cv-
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`02163-JLS-DFM (C.D. Cal.)) as well as an ITC Investigation between the parties
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`involving similar subject matter (337-TA-1034). Moreover, this proceeding is in a
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`preliminary stage. A Trial has not yet been instituted, and no cross-examination or
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`other discovery has occurred. Additionally, public policy consideration favor
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`settlement between the parties. See Office Trial Practice Guide, 77 Fed. Reg.
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`48,756 at 48,768 (Aug. 14, 2012).
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`IPR2017-01069
` U.S. PATENT NO. 7,275,186
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`The agreement to terminate this proceeding has been made in writing, and a
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`true and correct copy of the same is attached as Exhibit 2001. There are no
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`additional collateral agreements or undertakings made in connection with, or in
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`contemplation of, termination of this proceeding.
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`II. Status of Related Litigation
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`As noted above, the related district court action between Patent Owner and
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`Petitioner has been settled and dismissed. See Memory Technologies, LLC
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`Exhibits 2001 and 2002.
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`III. Request To Treat Settlement Agreement as Business Confidential
`Information
`The Parties hereby jointly request that the settlement agreement (including
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`any related attachments) filed herewith as Memory Technologies, LLC Exhibit
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`2001 be treated as business confidential information, be kept separate from the file
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`of the above captioned IPR, and be made available only to Federal Government
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`agencies on written request, or to any person on a showing of good cause pursuant
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`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). In view of that request, the
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`settlement agreement has been filed for access by the “Parties and Board Only.”
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`V. Conclusion
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`For the foregoing reasons, Patent Owner and Petitioner jointly request that the
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`Board terminate this Inter Partes Review proceeding, treat the settlement agreement
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`filed herewith as business confidential information and keep the agreement separate
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`IPR2017-01069
` U.S. PATENT NO. 7,275,186
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`from the file of the above captioned IPR.
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`Dated: July 7, 2017
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` /Nicholas T. Peters /
`Nicholas T. Peters (Reg. No. 53,456)
`ntpete@fitcheven.com
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`Thomas F. Lebens (Reg. No. 38,221)
`TLebens@fitcheven.com
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`Timothy P. Maloney (Reg. No. 38,233)
`tim@fitcheven.com
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`Paul B. Henkelmann (Reg No. 65,891)
`phenkelmann@fitcheven.com
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`Fitch, Even, Tabin & Flannery LLP
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`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603-3406
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`(805) 548-1800
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`Counsel for Patent Owner
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`Memory Technologies LLC
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` /Eliot D. Williams/
`Eliot D. Williams (Reg. No. 50,822)
`eliot.williams@bakerbotts.com
`Jason German (Reg. No. 69,497)
`jason.german@bakerbotts.com
`Baker Botts LLP
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304
`(650) 739-7611
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`Brian W. Oaks (Reg. No. 44,981)
`brian.oaks@bakerbotts.com
`Chris V. Ryan (Reg. No. 54,759)
`chris.ryan@bakerbotts.com
`Baker Botts LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`(512) 322-2500
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`Counsel for Petitioner
`SanDisk LLC
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`IPR2017-01069
` U.S. PATENT NO. 7,275,186
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a true
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`copy of the foregoing JOINT MOTION TO TERMINATE PROCEEDING
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`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72 AND JOINT
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`REQUEST TO KEEP PAPERS SEPARATE AS BUSINESS CONFIDENTIAL
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`INFORMATION was served this 7th day of July, 2017, by e-mail upon the
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`following:
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`Eliot D. Williams, eliot.williams@bakerbotts.com
`Brian Oaks, brian.oaks@bakerbotts.com
`Chris Ryan, chris.ryan@bakerbotts.com
`Jason German, jason.german@bakerbotts.com
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`SanDisk has consented to service by electronic means.
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`Dated: July 7, 2017
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`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
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`Respectfully submitted,
`FITCH, EVEN, TABIN & FLANNERY LLP
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`By: /Nicholas T. Peters /
`Nicholas T. Peters
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`Registration No. 53,456
`ntpete@fitcheven.com
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`5
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