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`DOCKET: 2211726-00149
`Filed on behalf of Unified Patents Inc.
`By:
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`David L. Cavanaugh, Reg. No. 36,476 (David.Cavanaugh@wilmerhale.com)
`Daniel V. Williams, Reg. No. 45,221 (Daniel.Williams@wilmerhale.com)
`Evelyn C. Mak, Reg. No. 50,492
` (Evelyn.Mak@wilmerhale.com)
`Wilmer Cutler Pickering Hale and Dorr LLP 1875
`Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`
`Roshan Mansinghani, Reg. No. 62,429
`Jonathan Stroud, Reg. No. 72,518
`
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, DC, 20009
`Tel: (202) 805-8931
`
`
`(roshan@unifiedpatents.com)
`(jonathan@unifiedpatents.com)
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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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`UNIFIED PATENTS INC.
`Petitioner
`v.
`WIRELESS MONITORING SYSTEMS LLC
`Patent Owner
`
`IPR2018-00027
`Patent 9,280,886
`
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`JOINT MOTION TO DISMISS AND TERMINATE
`THE PROCEEDING UNDER 37 CFR § 42.71(a)
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`Pursuant to 37 CFR § 42.71(a), Petitioner Unified Patents Inc.
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`(“Unified” or “Petitioner”) and Patent Owner Wireless Monitoring Systems
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`LLC (“Patent Owner”) jointly request termination of the Inter Partes
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`Review of U.S. Patent 9,280,886 in IPR2018-00027.
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`Petitioner and Patent Owner have entered into a written confidential
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`settlement agreement that fully resolves all underlying disputes between the
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`parties, including IPR2018-00027 against U.S. Patent 9,280,886. The Parties
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`are concurrently filing a copy of the Settlement Agreement as EX1012 along
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`with a request to treat it as confidential business information pursuant to 35
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`U.S.C. § 317(b). The undersigned represents that there are no other
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`agreements, oral or written, between the parties made in connection with, or
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`in contemplation of, the termination of the present proceeding and that
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`EX1012 represents a true and accurate copy of the agreement between the
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`parties that resolves the present proceeding.
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`On June 19, 2018, the Parties informed the Board of the settlement via
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`e-mail and requested authorization to file a joint motion to terminate the
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`proceeding with respect to both the Patent Owner and the Petitioner. As set
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`forth in an e-mail dated June 21, 2018, the Board authorized the filing of the
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`requested joint motion to terminate this proceeding as to both parties.
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`Accordingly, Petitioner and Patent Owner jointly request termination of the
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`1
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`IPR2018-00027
`US Patent 9,280,886
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`present proceeding.
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`Public policy favors dismissing and terminating the present inter
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`partes review petition. Congress and federal courts have expressed a strong
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`interest in encouraging settlement in litigation. See, e.g., Delta Air Lines,
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`Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.]
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`68 is to encourage the settlement of litigation.”); Bergh v. Dept. of Transp.,
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`794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of
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`cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit places a
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`particularly strong emphasis on settlement. See Cheyenne River Sioux Tribe
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`v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors
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`settlement to reduce antagonism and hostility between parties). And, the
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`Board’s Trial Practice Guide stresses that “[t]here are strong public policy
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`reasons to favor settlement between the parties.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Dismissing this IPR petition and terminating review early promotes
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`the Congressional goal of establishing a more efficient patent system by
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`limiting unnecessary and counterproductive costs. See Changes
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`to
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`Implement
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`Inter Partes Review Proceedings, Post-Grant Review
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`Proceedings, and Transitional Program for Covered Business Method
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`Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
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`2
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`IPR2018-00027
`US Patent 9,280,886
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`Additionally, dismissing of this IPR is appropriate as the Board has
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`not yet “decided the merits of the proceeding.” See, e.g., Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Unified filed its
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`petition for inter partes review on October 6, 2017. The Board instituted
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`trial on April 11, 2018. No depositions have taken place and neither the
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`Patent Owner nor the Petitioner have submitted any substantive briefing
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`post-institution. The parties have now settled their dispute, and have reached
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`agreement to dismiss this inter partes review petition and terminate its
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`consideration. The USPTO can conserve its resources through terminating
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`the proceedings now, removing the need for the Board to further consider
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`the arguments, to issue an Institution Decision, or to render a Final Decision.
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`Furthermore, no other party’s rights will be prejudiced by the termination of
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`this proceeding.
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`The related cases at the district court, which were previously listed in
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`the mandatory notices, are either in the process of, or have all been,
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`administratively terminated.
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`Therefore, Petitioner and Patent Owner request termination of the
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`Inter Partes Review IPR2018-00027 of U.S. Patent 9,280,886.
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`3
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`Date: July 2, 2018
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`Respectfully submitted,
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`IPR2018-00027
`US Patent 9,280,886
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`
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`/Evelyn C. Mak/
`Evelyn C. Mak, Reg. No. 50,492
`Wilmer Cutler Pickering Hale and Dorr LLP
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`/RABaker/
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`Richard A. Baker, Reg. No. 48,124
`New England Intellectual Property, LLC
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`IPR2018-00027
`US Patent 9,280,886
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`
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`Table of Exhibits
`Description
`U.S. Patent 9,280,886 (“’886 patent”)
`Declaration of Professor Paul Franzon (“Franzon”)
`U.S. Pat. 6,215,405 (“Handley”) (filed on May 11, 1998;
`published on Apr. 10, 2001)
`U.S. Pat. 5,499,196 (“Pacheco”) (filed on Oct. 19, 1993;
`published on Mar. 12, 1996)
`U.S. Pat. 6,057,549 (“Castleman”) (filed on May 30,
`1997; published on May 2, 2000)
`U.S. Pat. 6,360,277 (“Ruckley”) (filed on Jul. 22, 1998;
`published on Mar. 19, 2002)
`File History, 11/21/14 Preliminary Amendment
`File History, 3/11/15 Office Action
`File History, 5/26/15 Response
`File History, 5/26/15 Terminal Disclaimer
`File History, 10/7/15 Notice of Allowability
`Settlement Agreement dated 6/18/18
`
`Exhibit
`1001
`1002
`1003
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`1004
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`1005
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`1006
`1007
`1008
`1009
`1010
`1011
`1012
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`5
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`CERTIFICATE OF SERVICE
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`IPR2018-00027
`US Patent 9,280,886
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`The undersigned hereby certifies that a copy of the foregoing Joint
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`Motion to Terminate the Proceeding for Inter Partes Review of U.S. Patent
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`9,280,886, Updated Exhibit List and Exhibit 1012 were served on July 3,
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`2018
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`via
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`electronic
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`at
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`the
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`following
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`address:
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`rbaker@newenglandip.com. Patent Owner has consented to electronic
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`service.
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`Date: July 3, 2018
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`
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`Respectfully submitted,
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`
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`
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`
`
` /Evelyn C. Mak/
`Evelyn C. Mak, Reg. No. 50,492
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: Evelyn.Mak@wilmerhale.com
`
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`6
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