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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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`C&A MARKETING, INC.
`Petitioner
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`v.
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`GOPRO, INC.
`Patent Owner
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`
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`Case IPR2017-01300
`Patent 9,025,896 B2
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`JOINT MOTION TO TERMINATE UNDER 35 U.S.C. § 317(a)
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`As authorized by the Patent Trial and Appeal Board’s (“Board”) e-mail
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`dated September 21, 2017 (Exhibit 2002), Petitioner C&A Marketing, Inc. and
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`Patent Owner GoPro, Inc. (collectively, “the Parties”) jointly and respectfully
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`move that the inter partes review (“IPR”) of U.S. Patent No. 9,025,896 (“’896
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`Patent”) be terminated under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72.
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`1.
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`Termination Is Appropriate under 35 U.S.C. § 317(a)
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`Petitioner filed its petition for IPR on April 21, 2017. (Paper 2.) Patent
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`Owner filed and served its Preliminary Response on August 16, 2017. (Paper 6).
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`The Board has not rendered a decision on institution as of the date of this filing.
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`The Parties have now settled their dispute and executed a confidential
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`settlement agreement to terminate both this proceeding and the parties’ related
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`district court litigation pending in the U.S. District Court for the Northern District
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`of California, in the lawsuit styled GoPro, Inc. v. C&A Marketing, Inc., et. al., No.
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`16-cv-03590-JST (“NDCA Action”), filed June 26, 2016. Pursuant to 35 U.S.C. §
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`317(b) and 37 C.F.R. § 42.74(b), the Parties’ confidential settlement agreement is
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`in writing. The parties have concurrently filed herewith their confidential
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`settlement agreement as Exhibit 2003. 1
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`1 The Parties have jointly requested that the Board treat the confidential settlement
`agreement as business confidential information and keep it separate from the files
`of the IPR and the ’896 Patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`Termination of this proceeding is proper because the Board has not yet
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`decided whether to institute an inter partes review and has not yet decided the
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`merits of this proceeding. See 35 U.S.C. § 317(a) (“An inter partes review
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`instituted under this chapter shall be terminated with respect to any petitioner upon
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`the joint request of the petitioner and the patent owner, unless the Office has
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`decided the merits of the proceeding before the request for termination is filed.”).
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`Upon the requested termination under 35 U.S.C. § 317(a), no estoppel or prejudice
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`provided by 35 U.S.C. § 315(e) attaches to this proceeding or the Petitioner.
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`Further, termination of this proceeding will not impact any other proceeding before
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`the Board. Nor can any of the other defendants in the NDCA Action seek inter
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`partes review of the ’896 Patent, as every defendant had been served a copy of the
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`complaint by June 30, 2016. Accordingly, the parties respectfully request that the
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`Board terminate this proceeding under 35 U.S.C. § 317(a).
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`2.
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`The Related District Court Litigation Has Been Resolved
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`To date, there has only been a single district court litigation involving the
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`’896 Patent: the NDCA Action. Beyond the Petitioner and Patent Owner, that
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`lawsuit involved two additional parties: C&A Licensing, LLC and PLR IP
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`Holdings, LLC. Each of those parties have been dismissed with prejudice from the
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`NDCA Action, as set forth in the Joint Stipulation for Dismissal With Prejudice
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`submitted herewith as Exhibit 2004.
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`3
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`3. There Are No Related or Pending IPR Proceedings
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`Petitioner and Patent Owner are not aware of any other pending or related
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`IPR proceedings.
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`4.
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`Conclusion
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`For the foregoing reasons, the Parties jointly and respectfully request
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`termination of this proceeding under 35 U.S.C. § 317(a).
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`Dated: September 27, 2017 Respectfully submitted,
`By: /s/ Matthew Kreeger
`Matthew Kreeger
`mkreeger@mofo.com
`Registration No. 56,398
`MORRISON & FOERSTER LLP
`425 Market St.
`San Francisco, CA 94105
`Tel: (415) 268-7000
`Fax: (415) 268-7522
`Desmond O’Sullivan
`dosullivan@mofo.com
`Registration No.: 67,576
`MORRISON & FOERSTER LLP
`12531 High Bluff Drive, Suite 100
`San Diego, CA 92130
`Tel: (858) 720-5100
`Fax: (858) 720-5125
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`4
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`Dated: September 27, 2017
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` Respectfully submitted,
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`By: /s/ John C. Alemanni
`John C. Alemanni
`jalemanni@kilpatricktownsend.com
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`KILPATRICK TOWNSEND &
`STOCKTON LLP
`4208 Six Forks Road
`Suite 1400
`Raleigh, NC 27609
`Telephone: (336) 607-7311
`Fax: (336) 734-2621
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing JOINT MOTION TO
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`TERMINATE UNDER 35 U.S.C. § 317(a) was served via electronic mail on
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`September 27, 2017 to the following:
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`Matthew Kreeger
`mkreeger@mofo.com
`Registration No. 56,398
`MORRISON & FOERSTER LLP
`425 Market St.
`San Francisco, CA 94105
`Tel: (415) 268-7000
`Fax: (415) 268-7522
`
`Desmond O’Sullivan
`dosullivan@mofo.com
`Registration No.: 67,576
`MORRISON & FOERSTER LLP
`12531 High Bluff Drive, Suite 100
`San Diego, CA 92130
`Tel: (858) 720-5100
`Fax: (858) 720-5125
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`
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` /s/ John C. Alemanni
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
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`6
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`Dated: September 27, 2017
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`70221933V.1
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