`Date: December 19, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CPI CARD GROUP INC.
`Petitioner,
`
`v.
`
`GEMALTO S.A.
`Patent Owner.
`____________
`
`Case IPR2017-01320
`Patent 6,786,418
`
`_________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`UNDER 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-01320 (Pat. 6,786,418)
`Joint Motion to Terminate
`
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, and the
`
`Board’s authorization of December 18, 2017 (see Exhibit 2016), Petitioner CPI
`
`Card Group Inc. (“CPI”) and Patent Owner Gemalto S.A. (“Gemalto”)
`
`(collectively, the “Parties”) jointly move the Board to terminate IPR2017-01320.
`
`A true copy of the Settlement Agreement entered into between the Parties on
`
`September 28, 2017, is submitted herewith as Exhibit 2017. Pursuant to that
`
`Settlement Agreement, CPI and Gemalto agree to cooperate to request termination
`
`of this inter partes review (“IPR”). See Exhibit 2017 at Art. 3. The Parties certify
`
`that there are no collateral agreements or understandings made in connection with,
`
`or in contemplation of, the termination of this IPR.
`
`The subject patent of this IPR was involved in litigation captioned Gemalto
`
`S.A. v. CPI Card Group Inc., Civil Action No. 1:16-cv-01006, (D. Col.), which
`
`was terminated on December 7, 2017, pursuant to a stipulation to dismiss filed by
`
`the parties that same day. The Parties are not aware of any other litigation or
`
`proceeding, including, but not limited to, proceedings in the U.S. Patent and
`
`Trademark Office, involving the subject patent. The Parties do not contemplate
`
`any litigation or proceeding involving the subject patent in the foreseeable future.
`
`1
`
`
`
`Case No. IPR2017-01320 (Pat. 6,786,418)
`Joint Motion to Terminate
`
`Date: December 19, 2017
`
`
`
`
`
`
`Respectfully submitted,
`
`/Michael J. Scheer/ .
`Michael J. Scheer, Lead Counsel
`Reg. No. 34,425
`mscheer@michaeljscheer.com
`The Law Office Of Michael J. Scheer
`5531 Murietta Avenue
`Sherman Oaks, CA 91401
`818-616-3363,
`Counsel for Petitioner CPI Card
`Group Inc.
`
`
`
`
`/Peter C. Schechter/
`Peter C. Schechter (Reg. No. 31,665)
`Schechter@oshaliang.com
`Tammy J. Dunn (Reg. No. 69,167)
`Dunn@oshaliang.com
`GemaltoService@oshaliang.com
`OSHA LIANG LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`Tel.| Fax: 713.228.8600| 713.228.8778
`
`Counsel for Patent Owner Gemalto
`S.A.
`
`
`2
`
`
`
`Case No. IPR2017-01320 (Pat. 6,786,418)
`Joint Motion to Terminate
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that, on December
`
`19, 2017, I caused a true and correct copy of the foregoing JOINT MOTION TO
`
`TERMINATE (and all exhibits filed therewith) to be served via electronic mail on
`
`the following counsel of record for Petitioner:
`
`Michael J. Scheer, (Lead Counsel)
`THE LAW OFFICE OF MICHAEL J. SCHEER
`5531 Murietta Avenue
`Sherman Oaks, CA 91401
`MScheer@michaeljscheer.com
`
`Pejman Sharifi (Back-Up Counsel)
`WINSTON STRAWN LLP
`200 Park Avenue
`New York, NY 10166-4193
`PSharifi@winston.com
`
`Louis L. Campbell (Back-Up Counsel)
`WINSTON & STRAWN LLP
`275 Middlefield Rd, Suite 205
`Menlo Park, CA 94025
`LLcampbell@winston.com
`
`
`Dated: December 19, 2017
`
`
`
`
`3
`
`Respectfully submitted,
`/Peter C. Schechter/
`Peter C. Schechter
`Reg. No. 31,665
`Schechter@oshaliang.com
`GemaltoService@oshaliang.com
`OSHA LIANG LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`Tel.| Fax: 713.228.8600| 713.228.8778
`
`
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