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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SALESLOFT, INC.,
`Petitioner
`
`v.
`
`INSIDESALES.COM, INC.,
`Patent Owner
`
`
`Case IPR2017-01070
`Patent 7,072,947
`_____________________
`
`
`Before WILLIAM V. SAINDON, ROBERT J. WEINSCHENK, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317(a)
`
`DM2\8367170.2
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`
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`
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72, 42.74, Petitioner
`
`Case IPR2017-01070
`Patent No. 7,072,947
`
`
`
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`SalesLoft, Inc. (“Petitioner”) and Patent Owner InsideSales.com, Inc. (“Patent
`
`Owner”) jointly move for termination of the inter partes review of U.S. Patent No.
`
`7,072,947 (“the ’947 patent”), Case No. IPR2017-01070, with the United States
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`Patent and Trademark Office. This Joint Motion was authorized by the Board via
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`email on December 4, 2017.
`
`The parties have settled their dispute and have reached agreement to
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`terminate this inter partes review. A “Settlement Agreement and Mutual Release
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`of Claims” has been made in writing and was executed by Petitioner and Patent
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`Owner on November 28, 2017. A true copy of the “Settlement Agreement and
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`Mutual Release of Claims” in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(b) is being submitted concurrently herewith as Exhibit 1016.
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`Submitted concurrently herewith is a request by Petitioner and Patent Owner
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`that the “Settlement Agreement and Mutual Release of Claims” be treated as
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`business confidential information, be kept separate from the file of the involved
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`patents, and be made available only to Federal Government agencies on written
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`request, or to any person on a showing of good cause pursuant to 35 U.S.C. §
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`317(b) and 37 C.F.R. § 42.74(c).
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`DM2\8367170.2
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`
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`Pursuant to settlement, the parties have stipulated to dismissal and the
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`Case IPR2017-01070
`Patent No. 7,072,947
`
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`district court has dismissed all claims and counterclaims in the following related
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`district court litigation:
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`InsideSales.com, Inc. v. SalesLoft, Inc., United States District Court for the
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`District of Utah, Case No. 2:16-cv-00859-DAK-PMW, filed on August 4,
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`2016. (“Utah Litigation”)
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`The Patent Owner and the Petitioner are the only parties to the Utah
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`Litigation. The Utah Litigation also asserted U.S. Patent No. 7,076,533 B1 (the
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`“‘533 patent”). The matter of IPR2017-01071, directed to the ‘533 patent, is
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`currently pending before the Board, and the parties are concurrently filing a Joint
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`Motion to Terminate that proceeding as well.
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`No other petitioners remain in this inter partes review, and no final written
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`decision on the merits has been entered. For at least these reasons, termination of
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`the inter partes review is proper under 35 U.S.C. § 317(a) and 37 C.F.R. §
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`42.74(a).
`
`Respectfully submitted,
`
`By: /Patrick D. McPherson/
`Patrick D. McPherson
`Reg. No. 46,255
`DUANE MORRIS LLP
`505 9th Street NW, Suite 1000
`Washington, DC 20004
`P: 202-776-5214 / F: 202-776-7801
`
`
`DM2\8367170.2
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`3
`
`
`
`Case IPR2017-01070
`Patent No. 7,072,947
`
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`PDMcPherson@duanemorris.com
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`David T. Xue, Ph.D.
`Reg. No. 54,554
`DUANE MORRIS LLP
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`P: 650-847-4153 / F: 650-847-4151
`DTXue@duanemorris.com
`
`Attorneys for Petitioner,
`SalesLoft, Inc.
`
`By: /Thomas M. Hardman/
`Thomas M. Hardman
`Reg. No. 51,777
`RAY QUINNEY & NEBEKER,
`P.C.
`36 S State Street, Suite 1400
`Salt Lake City, UT 84111
`T: 801-323-3307 / F: 801-532-7543
`thardman@rqn.com
`
`Attorneys for Patent Owner,
`InsideSales.com, Inc.
`
`
`
`
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`Dated: December 5, 2017
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`
`
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`
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`DM2\8367170.2
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`4
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`
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`CERTIFICATE OF SERVICE
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`Case IPR2017-01070
`Patent No. 7,072,947
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on the 5th
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`day of December, 2017, a complete copy of the foregoing Joint Motion to
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`Terminate and all supporting exhibits were served by filing this document with the
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`PTAB’s End to End System as well as via email to Patent Owner at the following
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`address:
`
`Thomas M. Hardman
`Reg. No. 51,777
`RAY QUINNEY & NEBEKER, P.C.
`36 S State Street, Suite 1400
`Salt Lake City, UT 84111
`thardman@rqn.com
`
`
`
`
`/Patrick D. McPherson/
`Patrick D. McPherson, Reg. No. 46,255
`DUANE MORRIS LLP
`505 9th Street NW, Suite 1000
`Washington, DC 20004
`P: 202-776-5214 / F: 202-776-7801
`PDMcPherson@duanemorris.com
`
`Attorneys for Petitioner,
`SalesLoft, Inc.
`
`
`
`DM2\8367170.2
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`5
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`
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