UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`EVERNOTE CORPORATION, Petitioner,
`
`
`
`v.
`
`TALSK RESEARCH.,
`Patent Owner
`
`
`Case IPR2017-01154
`Patent 7,178,097
`
`JOINT MOTION TO TERMINATE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`EVERNOTE CORPORATION, Petitioner,
`
`
`
`v.
`
`TALSK RESEARCH.,
`Patent Owner
`
`
`Case IPR2017-01154
`Patent 7,178,097
`
`JOINT MOTION TO TERMINATE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and the Board’s
`
`authorization provided on January 9, 2018, Petitioner Evernote Corporation
`
`(“Petitioner”) and Patent Owner TALSK RESEARCH, INC. (“Patent Owner”)
`
`(collectively the “Parties”) jointly request termination of Inter Partes Review No.
`
`IPR2017-01154 pursuant to settlement. As there are no other petitioners in this
`
`proceeding and the proceeding is still at an early stage, the Parties respectfully
`
`submit that termination of this proceeding is appropriate.
`
`STATEMENT OF FACTS
`
`Petitioner filed its petition in this proceeding for Inter Partes Review of
`
`U.S. Patent No. 7,178,097 (the “’097 Patent”) on March 24, 2017. No other
`
`petitions related to the ’097 Patent are pending. The IPR was instituted on
`
`September 28, 2017. The deadline for Patent Owner to file a Patent Owner
`
`Response in this proceeding is currently January 12, 2018. Petitioner and Patent
`
`Owner have reached a Settlement Agreement to end their disputes in this
`
`proceeding and the underlying litigation. Pursuant to 35 U.S.C. § 317(b) and 37
`
`CFR § 42.74(b), the agreement between the Parties is in writing, constitutes the
`
`entire understanding and agreement between the Parties, and a copy of the
`
`Settlement Agreement is submitted herewith as Confidential Exhibit 1023.
`
`The Parties jointly request that the settlement agreement filed as Exhibit
`
`1023 be treated as business confidential information and kept separate from the
`
`
`
`
`
`underlying patent file, as provided in 35 U.S.C. § 317(b) and 37 C.F.R. §
`
`42.74(c), to maintain confidentiality of the settlement agreement.
`
`ARGUMENT
`
`I.
`
`GOOD CAUSE EXISTS TO TERMINATE THE ABOVE-CAPTIONED
`IPR
`
`The Parties have resolved their disputes with regard to the ’097 Patent.
`
`The Parties’ agreement with regard to the ’097 Patent is memorialized in the
`
`document filed concurrently herewith as Confidential Exhibit 1023. Termination
`
`of this proceeding is proper because the IPR is in its early stages. The Board has
`
`not “decided the merits of the proceeding before the request for termination is
`
`filed.” See 35 U.S.C. § 317(a); 77 Fed. Reg. 48768 (“The Board expects that a
`
`proceeding will terminate after filing of a settlement agreement, unless the Board
`
`has already decided the merits of the proceeding.”). Though this IPR has been
`
`instituted, the Patent Owner has not yet filed its Patent Owner Response,
`
`Petitioner has not yet filed its Reply, and the Board has not yet decided the merits
`
`of the proceeding at the time this motion for termination is filed. The Parties
`
`submit that termination of this proceeding will preserve the Board’s resources
`
`and obviate the need for any more Board involvement in this matter. Lastly,
`
`dismissal of the Petition and termination of the above-captioned IPR is a just and
`
`fair resolution.
`
`
`
`
`
`2
`
`
`
`
`
`II.
`
`
`
`IDENTITY AND STATUS OF PARTIES IN RELATED LITIGATION
`INVOLVING THE PATENT
`
`This ’097 Patent was the subject of the following litigation in the Northern
`
`District of California: Talsk Research, Inc. v. Evernote Corporation, No. 3:17-
`
`cv-05576 (N.D. Cal.). This case was dismissed on January 8, 2018.
`
`
`
`III.
`
`IDENTITY AND STATUS OF ANY RELATED PROCEEDINGS
`BEFORE THE OFFICE
`
`The Parties are not aware of any other proceedings related to the ’097 Patent.
`
`CONCLUSION
`
`For at least the foregoing reasons, Petitioner and Patent Owner respectfully
`
`request termination of this Inter Partes Review.
`
`
`
`Respectfully submitted by:
`
`/Scott A. McKeown/
`Scott A. McKeown (Lead Counsel)
`Reg. No. 42,866
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, NW
`Washington, D.C. 20006-6807
`Phone: +1-202-508-4740
`Fax: +1-617-235-9492
`scott.mckeown@ropesgray.com
`
`Victor Cheung (Back-Up Counsel)
`Reg. No. 66,229
`
`Dated: January 10, 2018
`
`/Douglas J. Kline/
`Douglas J. Kline
`Reg. No. 35,574
`Robert Frederickson III
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`Phone: +617-570-1209/1947
`Fax: +617-523-1231
`dkline@goodwinlaw.com
`rfrederickson@goodwinlaw.com
`
`
`
`
`3
`
`
`
`Adeel Haroon
`Reg. No. 64,938
`GOODWIN PROCTER LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001
`Phone: +202-346-4000
`Fax: +202-204-7180
`aharoon@goodwinlaw.com
`
`Attorneys for Petitioner
`Evernote Corporation
`
`
`
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, NW
`Washington, D.C. 20006-6807
`Phone: +1-202-508-4641
`Fax: +1-617-235-9492
`victor.cheung@ropesgray.com
`
`Attorneys for Patent Owner
`Talsk Research, Inc.
`
`Mailing address for all PTAB
`correspondence:
`ROPES & GRAY LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 10,
`
`2018, I caused copies of the foregoing JOINT MOTION TO TERMINATE and
`
`EXHIBIT 1023 to be served via email on the following counsel for Patent Owner:
`
`Scott A. McKeown (scott.mckeown@ropesgray.com)
`
`Victor Cheung (victor.cheung@ropesgray.com)
`
`
`
`Dated: January 10, 2018
`
`By: /Douglas J. Kline/
`(Reg. No. 35,574)
`Lead Counsel for Petitioner
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
