IPR2018-00351
`
`Paper No. 6
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK CORPORATION AND DISH NETWORK L.L.C.
`Petitioners,
`
`v.
`
`IPA TECHNOLOGIES, INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2018-00351
`U.S. Patent No. 6,757,718
`
`––––––––––––––––––
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
`
`
`
`Paper No. 6
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK CORPORATION AND DISH NETWORK L.L.C.
`Petitioners,
`
`v.
`
`IPA TECHNOLOGIES, INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2018-00351
`U.S. Patent No. 6,757,718
`
`––––––––––––––––––
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
`
`
`
`IPR2018-00351
`
`Joint Motion to Terminate
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, DISH Network
`
`Corporation and DISH Network L.L.C. (“Petitioners”) and Patent Owner IPA
`
`Technologies, Inc. (“Patent Owner”) jointly request termination of this inter partes
`
`review (IPR) of 6,757,718 (“’718 patent”), Case No. IPR2018-00351, and
`
`termination of the proceeding with respect to Petitioner. The parties note that the
`
`Decision on Institution is pending, and this Joint Motion is filed prior to the deadline
`
`for Patent Owner’s Preliminary Response.
`
`The parties have settled and have reached agreement to terminate this IPR. In
`
`accordance with 37 C.F.R. § 42.20(b), the parties received authorization from the
`
`Board to file this motion on April 16, 2018.
`
`Termination of this proceeding is proper for at least the following reasons:
`
` The parties are jointly requesting termination. 77 Fed. Reg. 48756,
`
`48768 (Aug. 14, 2012) (“There are strong public policy reasons to
`
`favor settlement between the parties to a proceeding.”) (emphasis
`
`added). Both Congress and the federal courts have expressed a strong
`
`interest in encouraging settlement in litigation. See, e.g., Delta Air
`
`Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed.
`
`R. Civ. P.] 68 is to encourage the settlement of litigation.”); Bergh v.
`
`Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law
`
`favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
`
`Federal Circuit places a particularly strong emphasis on settlement. See
`2
`
`
`
`IPR2018-00351
`
`Joint Motion to Terminate
`
`Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir.
`
`1986) (noting that the law favors settlement to reduce antagonism and
`
`hostility between parties). Here, no public interest or other factors
`
`weigh against termination of this proceeding.
`
` The Board has not yet “decided the merits of the proceeding before the
`
`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis
`
`added); 77 Fed. Reg. 48768 (“The Board expects that a proceeding will
`
`terminate after the filing of a settlement agreement unless the Board has
`
`already decided the merits of the proceeding.”) Indeed, the Board has
`
`not yet made a decision on institution of this inter partes review.
`
`Petitioners filed their petition for inter partes review on January 26,
`
`2018. No Motions are outstanding in this proceeding. No other party’s
`
`rights will be prejudiced by the termination of this inter partes review.
`
`This supports the propriety of terminating this proceeding even though
`
`the settlement and termination provisions of 35 U.S.C. § 317, on their
`
`face, apply only to “instituted” proceedings. 77 Fed. Reg. 48680, 48686
`
`(Aug. 14, 2012) (And 35 U.S.C. 317(a) provides “An inter partes
`
`review instituted under this chapter shall be terminated with respect to
`
`any petitioner upon the joint request of the petitioner and the
`
`3
`
`
`
`IPR2018-00351
`
`Joint Motion to Terminate
`
`patent owner, unless the Office has decided the merits of the proceeding
`
`before the request for termination is filed.”)
`
` In IPA Technologies Inc. v. DISH Network Corporation et al., No. 1-16-
`
`cv-01170 (D. Del.) the parties are moving to dismiss the case. The
`
`settlement also calls for IPA Technologies Inc. and DISH Network
`
`Corporation et al. to jointly request termination of the proceeding before
`
`the Board involving the ‘718 patent (i.e., IPR2018-00351).
`
`The following proceedings are related to the ‘718 patent:
`
`IPA Technologies Inc. v. Google LLC, 1-18-cv-00318 (D. Del. filed Feb. 26, 2018);
`
`IPA Technologies Inc. v. Microsoft Corporation, 1-18-cv-00001 (D. Del. filed Jan. 2,
`
`2018); Google LLC v. IPA Technologies Inc., IPR2018-00384 (PTAB Dec. 22, 2017);
`
`IPA Technologies Inc. v. Huawei Technologies Co., Ltd. et al., 1-17-cv-00248 (D.
`
`Del. filed Mar. 9, 2017); IPA Technologies Inc. v. LG Electronics Inc. et al., No. 1-
`
`17-cv-00121 (D. Del. filed Feb. 3, 2017); IPA Technologies Inc. v. Sony Electronics
`
`Inc., et al., No. 1-17-cv-00055 (D. Del. filed Jan. 19, 2017); IPA Technologies Inc. v.
`
`Amazon.com, Inc. et al., No. 1-16-cv-01266 (D. Del. filed Dec. 19, 2016); IPA
`
`Technologies Inc. v. TCL Communication Technology Holdings, Ltd. et al., No. 1-16-
`
`cv-01236 (D. Del. filed Dec. 16, 2016); IPA Technologies Inc. v. DISH Network
`
`Corporation et al., No. 1-16-cv-01170 (D. Del. filed Dec. 9, 2016).
`
`4
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`
`
`IPR2018-00351
`
`Joint Motion to Terminate
`
`The settlement agreement between the parties has been made in writing, and
`
`a true and correct copy will be filed with this request as Exhibit 1035.
`
`Aside from the settlement agreement, the parties confirm that there are no
`
`other “collateral agreements referred to in such agreement or understanding, made
`
`in connection with, or in contemplation of, the termination of [the] inter partes
`
`review.” 35 U.S.C. § 317(b).
`
`5
`
`
`
`IPR2018-00351
`
`Joint Motion to Terminate
`
`Dated: April 17, 2018
`
`
`
`Respectfully submitted,
`
`/Eliot Williams/
`Eliot Williams
`Registration No. 50,822
`Baker Botts LLP
`1001 Page Mill Rd.
`Palo Alto, CA 94304-1007
`Counsel for Petitioners
`
`/Sarah E. Spires/
`Sarah E. Spires
`Registration No. 61,501
`Skiermont Derby LLP
`1601 Elm Street, Suite 4400
`Dallas, TX 75201
`Counsel for Patent Owner
`
`
`
`IPR2018-00351
`
`Joint Motion to Terminate
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the Joint Motion to Terminate
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`Pursuant to 35 U.S.C. § 317 was served on April 17, 2018, by e-mail directed to
`
`counsel of record for the Patent Owner as follows:
`
`Dated: April 17, 2018
`
`Respectfully submitted,
`/Eliot Williams/
`Eliot Williams (Reg. No. 50,822)
`Baker Botts L.L.P.
`Counsel for Petitioners
`
`
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