`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`
`Sony Corporation,
`Petitioner,
`
`v.
`
`One-E-Way, Inc.
`Patent Owner.
`
`_________________________
`
`Case No. IPR2018-00219
`U.S. Patent No. 8,131,391
`_________________________
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`UNDER 35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, and the
`
`February 5, 2018, email correspondence where the Board authorized this filing,
`
`Petitioner Sony Corporation and Patent Owner One-E-Way, Inc. jointly request
`
`termination of this proceeding seeking inter partes review of U.S. Patent No.
`
`8,131,391.
`
`
`
`The parties have resolved their dispute with respect to U.S. Patent No.
`
`8,131,391—as described in the Confidential Settlement and License Agreement by
`
`the parties filed herewith as Exhibit 1014. Other than as indicated in the
`
`Agreement Exhibit 1014, there are no written or oral agreements or
`
`understandings, including any collateral agreements, between the parties, including
`
`but not limited to licenses, covenants not to sue, confidentiality agreements, or
`
`other agreements of any kind, that are made in connection with, or in
`
`contemplation of, the termination of this proceeding. See, e.g., General Growth
`
`Properties, Inc. et al. v. Peschke, IPR2013-00400, Paper 35 at 2-3 (Apr. 9, 2014).
`
`
`
`The parties are also filing concurrently herewith a joint request to treat the
`
`Agreement as business confidential information and to keep it separate from the
`
`files of the IPR and the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§42.74(c).
`
`
`
`Similar motions to terminate are being filed in IPR2018-00218 (also
`
`involving U.S. Patent No. 8,131,391), and in IPR2016-01638, IPR2016-01639,
`
`1
`
`
`
`
`
`IPR2018-00216, and IPR2018-00217 (involving related U.S. Patent Nos.
`
`9,282,396 and 7,865,258). The parties have also settled and are filing a motion to
`
`terminate the Sony Respondents from In re Certain Wireless Headsets, Inv. No.
`
`337-TA-943, pending before the U.S. International Trade Commission, which
`
`involves U.S. Patent Nos. 7,865,258 and 8,131,391.
`
`Termination of this proceeding is proper under 35 U.S.C. § 317(a). Strong
`
`public policy reasons favor settlement between the parties to a proceeding, Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012),
`
`including
`
`the consequent conservation of
`
`resources and elimination of
`
`uncertainties. No final written decision has been entered on the merits of this
`
`proceeding. Therefore, “[t]he Board expects that a proceeding will terminate after
`
`the filing of a settlement agreement.” Id.
`
`
`
`Accordingly, the parties respectfully request termination of this proceeding.
`
`Dated: February 9, 2018
`
`
`
`Respectfully submitted,
`
`/ Paul T. Qualey /
`Paul T. Qualey (Reg. No. 45,027)
`
`ANDREWS KURTH KENYON LLP
`1350 I Street NW, Ste. 1100
`Washington, DC 20005
`Tel: 202-662-2700
`Fax: 202-662-2739
`
`Counsel for Petitioner
`Sony Corporation
`
`2
`
`
`
` /
`
` Douglas G. Muehlhauser/
`Douglas G. Muehlhauser (Reg. No. 42,018)
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: 949-760-0404
`Fax: 949-760-9502
`
`Counsel for Patent Owner
`One-E-Way, Inc.
`
`
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the Joint Motion To
`
`Terminate Proceedings Under 35 U.S.C. § 317(a) and associated Exhibit has been
`served on the Patent Owner’s attorneys of record via electronic mail on February 9,
`2018, at the following address:
`
`Douglas G. Muehlhauser
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: (949) 760-0404
`2dgm@knobbe.com
`
`Daphne Burton (Reg. No. 45,323)
`BURTON IP LAW GROUP
`2029 Century Park East, Suite 400N
`Los Angeles, CA 90067
`Tel: +1.310.867.2754
`dburton@burtoniplaw.com
`
`
`Dated: February 9, 2018
`
`
`/s/ Paul Qualey
`Paul Qualey (Reg. No. 45,027)
`Counsel for Petitioner,
`Sony Corporation
`
`
`
`
`
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