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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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`MICROSOFT CORPORATION,
`Petitioner
`
`v.
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`
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner
`
`
`
`
`Case IPR2017-01818
`U.S. Patent No. 9,641,645 B2
`
`
`
`PAPER NO. 6
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`JOINT MOTION TO DISMISS THE PETITION
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`NY01:4389354.1
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`
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`
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`Pursuant to 37 C.F.R. § 42.71(a) and the authorization received from the
`
`Board by e-mail dated October 16, 2017, Patent Owner Bradium Technologies
`
`LLC (“Bradium”) and Petitioner Microsoft Corporation’s (“Microsoft”) jointly
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`request dismissal of the petition for inter partes review, which is directed to U.S.
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`Patent No. 9,641,645.
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`Dismissal and termination of this review are appropriate because the parties
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`have resolved their dispute regarding U.S. Patent No. 9,641,645 and have reached
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`an agreement to, among other things, terminate this review. Ex. 2001, Settlement
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`Agreement (submitted as business confidential information pursuant to 35 U.S.C. §
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`317(b) and 37 C.F.R. § 42.74(c)). “Generally, the Board expects that a proceeding
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`will terminate after the filing of a settlement agreement.” Oracle Corp. v. Cmty.
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`United IP, LLC, CBM2013-00015, Paper 13 (July 25, 2013) (citing Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48765–66 (Aug. 14, 2012)).
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`The petition for review was filed on July 20, 2017. No review has yet been
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`instituted. Termination at this early juncture promotes efficiency, conserves Board
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`resources and minimizes unnecessary costs.
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`On October 15, 2017, the parties advised the Board that they have reached a
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`settlement, and sought authorization to file a joint motion to terminate this
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`proceeding. The Board authorized the filing of a Joint Motion to Dismiss the
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`Petition on October 16, 2017.
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`NY01:4389354.1
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`- 1 -
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`Per the Board’s October 16, 2017 e-mail, a true copy of the parties’
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`confidential written settlement agreement is being filed as an exhibit
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`contemporaneously with this joint motion. The settlement agreement is being filed
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`for access by the “Parties and Board Only.” The parties desire that the settlement
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`agreement be maintained as business confidential information under 35 U.S.C. §
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`317(b) and 37 C.F.R. § 42.74(c), and a separate joint request for such is being filed
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`contemporaneously.
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`Pursuant to the Board’s October 16, 2017 e-mail, the parties certify that
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`there are no collateral agreements or understandings made in connection with, or in
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`contemplation of, the termination of the proceeding. See 37 C.F.R. § 42.74(b).
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`The Board’s e-mail advised that this motion “must update the Board
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`concerning the status of any litigation or proceeding, including, but not limited to,
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`proceedings in the U.S. Patent and Trademark Office involving the subject patent.”
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`Upon joint request of the parties, the litigation Bradium Technologies LLC v.
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`Microsoft Corp., 15-031-RGA (D. Del.) was dismissed by the United States
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`District Court for the District of Delaware on October 18, 2017. (See Case No. 15-
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`031-RGA, D.I. 129.) The parties are not aware of other litigation or proceedings
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`involving U.S. Patent No. 9,641,645.
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`The Board’s e-mail advised that this motion must “advise the Board whether
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`any litigation or proceeding involving the subject patent is contemplated in the
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`NY01:4389354.1
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`- 2 -
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`foreseeable future.” Bradium has made no determination as to whether the subject
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`patent will be the subject of any other litigation or proceedings in the foreseeable
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`future.
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`NY01:4389354.1
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`- 3 -
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`Dated: October 19, 2017
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`Respectfully submitted,
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`/s/ Chris J. Coulson
`Chris J. Coulson (Reg. No. 61,771)
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, New York 1004-1007
`Tel: (212) 425-7200
`Fax: (212) 425-5288
`chriscoulson@andrewskurthkenyon.com
`
`Michael Zachary (pro hac vice)
`michaelzachary@andrewskurthkenyon.com
`Clifford Ulrich (Reg. No. 42,194)
`cliffordulrich@andrewskurthkenyon.com
`
`
`Attorneys for Bradium Technologies LLC
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`
`
`
`
` /s/ Evan S. Day
`Chun M. Ng, Reg. No. 36,878
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`
`Matthew C. Bernstein, Pro Hac Vice
`Patrick J. McKeever, Reg. No. 66,019
`Vinay Sathe, Reg. No. 55,595
`Evan S. Day, Reg. No. 75,992
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`Attorneys for Microsoft Corporation
`
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`NY01:4389354.1
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`- 4 -
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on October
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`19, 2017, the foregoing is being served via electronic mail upon the following
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`counsel of record for Petitioner:
`
`
`Chun M. Ng (Reg. No. 36,878)
`Matthew Bernstein (pro hac vice)
`Vinay Sathe (Reg. No. 55,595)
`Patrick McKeever (Reg. No. 66,019)
`Evan S. Day (pro hac vice)
`PerkinsServiceBradiumIPR@perkinscoie.com
`
`/s/ Chris J. Coulson
`Chris J. Coulson
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, New York 1004-1007
`Tel: (212) 425-7200
`Fax: (212) 425-5288
`
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`NY01:4389354.1
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`- 5 -
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