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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________________
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`BEFORE THE PATENT TRIAL
`AND APPEAL BOARD
`____________________________________________
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`TransCore, LP
`Petitioner
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`v.
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`Axcess International, Inc.
`Patent Owner
`
`_________________________
`
`Case IPR2018-00048
`Patent No. 7,286,158
`_________________________
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`PROCEEDINGS PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`I. INTRODUCTION
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`
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`IPR2018-00048
`Joint Motion to Terminate
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`
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`The Petitioner, TransCore LP and Patent Owner, Axcess International, Inc.
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`(collectively referred to herein as “the Parties”) jointly request termination of inter
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`partes Case No. IPR2018-00048 in accordance with 35 U.S.C. § 317 and 37 C.F.R.
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`§ 42.74.
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`Petitioner and Patent Owner have agreed to settle all disputes between the
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`Parties involving U.S. Patent No. 7,286,158 (the ‘158 patent), including all
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`litigation and Patent Office proceedings related thereto. In particular, the Parties
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`agreed to settle and dismiss their related district court litigation (Axcess
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`International, Inc. v. TransCore, LP, Northern District of Texas Case No. 3:17-cv-
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`01697-M).
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`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ settlement agreement made in
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`contemplation of termination of the proceedings is in writing, and a true and
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`correct copy of such document is being filed herewith as Exhibit No. 1014. No
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`other such agreements, written or oral, exist between the Parties.
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`2
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`II. BACKGROUND
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`
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`IPR2018-00048
`Joint Motion to Terminate
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`
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`On October 10, 2017, the Petitioner filed a petition for an inter partes review
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`of claims 1-5, 8-12 and 19-21 of the ‘158 Patent.
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`On October 18, 2017, the Board accorded a filing date to the Petition. The
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`deadline for the Board to instate the IPR has not yet passed.
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`On March 22, 2018, the Parties agreed to settle all of their disputes involving
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`the ‘158 patent, including an agreement for the Patent Owner to file a dismissal
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`with prejudice of all claims asserted by the Patent Owner in the pending litigation,
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`and for the Parties to file a Joint Motion to Terminate IPR2018-00048.
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`On March 23, 2018 the Board authorized the Parties to file a joint motion to
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`dismiss the petition, and for the settlement agreement to be treated as business
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`confidential information and kept separate from the file (Exhibit 1013; email from
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`Patent Trial and Appeal Board dated March 23, 2018).
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`III. TERMINATION OF THE IPR IS APPROPRIATE
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`Under 35 U.S.C. § 317(a), an inter partes review shall be terminated with
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`respect to a party upon such joint request “unless the Office has decided the merits
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`of the proceedings before the request for termination is filed.” Termination of this
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`proceeding is appropriate because the Board has not yet decided the merits of the
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`proceeding. More specifically, the Board has not yet decided to instate IPR2018-
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`3
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`
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`IPR2018-00048
`Joint Motion to Terminate
`
`
`
`
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`00048.
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`As noted above, the Parties have reached a settlement agreement that
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`resolves all disputes between the parties regarding the ‘158 patent. A true copy of
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`the settlement agreement is filed concurrently herewith as Exhibit 1014. The
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`settlement agreement requires, in part, that the Parties seek termination of this
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`proceeding within five business days of the effective date of the settlement
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`agreement. The settlement agreement further requires that the Parties seek
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`dismissal of the related district court litigation within five business days of the
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`effective date of the settlement agreement. Accordingly, the Petitioner and Patent
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`Owner meet the statutory requirements for a “joint request” to terminate before the
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`Office “has decided the merits of the proceedings.” 35 U.S.C. §317(a).
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`Finally, there are strong public policy reasons to favor settlement between
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`the parties to a proceeding.
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`IV. RELATED LITIGATION
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`As noted above, the Patent Owner brought an action for patent infringement
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`with respect to the ‘158 patent in the Northern District of Texas. As part of the
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`settlement agreement, the Patent Owner will file a termination of that proceeding
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`within five business days of the settlement agreement.
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`No other litigation or proceedings exist between the Petitioner and Patent
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`4
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`IPR2018-00048
`Joint Motion to Terminate
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`
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`
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`Owner.
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`V. TREATMENT OF SETTLEMENT AGREEMENT AS
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`BUSINESS CONFIDENTIAL INFORMATION
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`Petitioner and Patent Owner hereby request that the settlement agreement
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`filed herewith as Exhibit 1014 be treated as business confidential information, and
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`be kept separate from the file of the above identified IPR, and be available only to
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`the Federal Government agencies on written request, or to any person on a
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`showing of good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`The settlement agreement contains confidential information that the Parties wish to
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`remain private. The settlement agreement was executed with the intent that the
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`contents thereof be kept confidential to the Parties. The settlement agreement has
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`been filed for access by the “Parties and Board only” in view of this request.
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`5
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`VI. CONCLUSION
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`IPR2018-00048
`Joint Motion to Terminate
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`For the reasons set forth above, the Parties respectfully request termination
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`of this proceeding. The Parties further submit that the settlement agreement filed
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`herewith should be treated as business confidential information.
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`Please charge any shortage in fees due in connection with the filing of this
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`paper, including extension of time fees, to Deposit Account 50-4752 and please
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`credit any excess fees to such deposit account.
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`Respectfully submitted,
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`SNYDER, CLARK, LESCH & CHUNG,
`L.L.P.
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`By: /Glenn Snyder, Reg. No. 41,428/
` Glenn Snyder
` Reg. No. 41,428
` Attorney for Petitioner
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`NI, WANG & MASSAND, PLLC
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`By: /Neal Massand, Reg. No. 54,296/
` Neal Massand
` Reg. No. 54,296
` Attorney for Patent Owner
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`Date: March 26, 2018
`950 Herndon Parkway
`Suite 365
`Herndon, VA 20170
`Telephone: (571) 323-5145
`Facsimile: (703) 439-2658
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`6
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`
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