`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SYNCRO SOFT SRL
`Petitioner,
`
`v.
`
`ALTOVA GMBH
`
`Patent Owner.
`
`
`
`Inter Partes Review Case No. IPR2018-00660
`
`Patent 9,501,456
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`
`PURSUANT TO 35 U.S.C. § 317(a) AND
`
`JOINT REQUEST THAT SETTLEMENT AGREEMENT BE TREATED AS
`
`BUSINESS CONFIDENTIAL INFORMATION AND KEPT SEPARATE
`
`PURSUANT TO 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74
`
`
`
`1
`
`
`
`I.
`
`SUMMARY:
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner SYNCRO SOFT SRL and
`
`Patent Owner ALTOVA GMBH (collectively, “the Parties”) jointly request
`
`termination of IPR2018-00660 which is directed to U.S. Patent No. 9,501,456
`
`(the ’456 Patent). The Parties have settled all of their disputes involving the ’456
`
`Patent. More specifically the Parties have agreed to settle and terminate the
`
`present Inter Partes review proceeding as well as the related district court
`
`litigation (Altova GmbH et al v. Syncro Soft SRL, case number 1:17-cv-11642,
`
`Massachusetts District Court). Pursuant to 37 C.F.R. § 42.74(b), the settlement
`
`agreement made in contemplation of termination of this proceeding is in writing,
`
`and true and correct copies of such are filed as Exhibit 2001. No other such
`
`agreements, written or oral, exist between or among the parties. The Parties
`
`jointly request that the settlement agreement be treated as business confidential
`
`information and kept separate pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
`
`42.74(c).
`
`I.
`
`BACKGROUND:
`
`On August 31, 2017, ALTOVA GMBH filed suit against SYNCRO
`
`SOFT SRL in district court (Altova GmbH et al. v. Syncro Soft SRL, case number
`
`1:17-cv-11642, Massachusetts District Court) alleging infringement of claims of
`
`the ’456 Patent.
`
`2
`
`
`
`On February 16, 2018, SYNCRO SOFT SRL filed a request for Inter
`
`Partes Review of claims 1-12 of the ’456 Patent (see Paper 1). The Board
`
`instituted IPR2018-00660 on September 5, 2018 (Paper 6). No discovery or
`
`briefing has taken place since institution.
`
`The Parties have engaged in settlement discussions relating to
`
`termination of all disputes involving the ’456 Patent. On December 5, 2018, the
`
`Parties agreed to a joint stipulation extending Due Date 1 of the Scheduling Order
`
`(Paper 7) so as to allow additional time for the Parties to finalize an agreement
`
`to terminate the proceedings under 35 U.S.C. § 317. On January 28, 2019, the
`
`Parties completed execution of a settlement agreement (effective January 23,
`
`2019) (Ex. 2001) relating to the termination of all disputes involving the ’456
`
`Patent including termination of the present proceeding and termination of the
`
`district court litigation.
`
`Patent Owner informed the Board on January 28, 2019 of the settlement and
`
`requested authorization to file a joint motion to terminate the proceeding with
`
`respect to both Petitioner and Patent Owner. Patent Owner further requested
`
`authorization to jointly request treatment of the settlement as business confidential
`
`information. On January 29, 2019, the Board authorized the filing of the requested
`
`joint motion to terminate this proceeding as to both Parties including the joint
`
`3
`
`
`
`request that the settlement agreement be treated as business confidential
`
`information and kept separate.
`
`II. TERMINATION IS APPROPRIATE:
`
`Termination of this proceeding is appropriate under 35 U.S.C. § 317(a) as
`
`the Board has not yet “decided the merits of the proceeding.” As noted above, no
`
`discovery or briefing has taken place since institution and Patent Owner has yet to
`
`file a response 35 U.S.C. § 317(a)(8). Furthermore, no dispute remains
`
`between Petitioner and Patent Owner involving the ’456 Patent since the
`
`Parties have agreed to jointly request termination of the present proceeding
`
`(IPR2018-00660) and the litigation between the Parties involving the ’456
`
`Patent (Altova GmbH et al v. Syncro Soft SRL, case number 1:17-cv-11642,
`
`Massachusetts District Court) will be dismissed as part of the settlement.
`
`III. STATUS OF RELATED LITIGATION:
`
`As noted above, the related district court litigation (Altova GmbH et al v.
`
`Syncro Soft SRL, case number 1:17-cv-11642, Massachusetts District Court)
`
`between Petitioner and Patent Owner has been settled and will be dismissed.
`
`IV. REQUEST TO TREAT SETTLEMENT AGREEMENT AS
`
`BUSINESS CONFIDENTIAL INFORMATION:
`
`Petitioner and Patent Owner hereby jointly request that the settlement
`
`agreement (including any related attachments) filed as Exhibit 2001 be treated
`
`4
`
`
`
`as business confidential information, be kept separate from the file of
`
`IPR2018-00660, and be made available only to Federal Government agencies
`
`on written request, or to any person on a showing of good cause pursuant to 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). In view of that request the
`
`settlement agreement has been filed for access by the “Parties and Board
`
`Only.”
`
`5
`
`
`
`V. CONCLUSION
`
`For the foregoing reasons, Petitioner and Patent Owner jointly request
`
`that the Board terminate this Inter Partes Review proceeding, and treat the
`
`settlement agreement filed herewith as business confidential information and
`
`keep the agreement separate from the file.
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
` Dated: January 29, 2018
`
`Attorney for Patent Owner
`
`/s/ Gabriel Goldman
`
`Gabriel Goldman (Reg. No. 61,343)
`BURNS & LEVINSON LLP
`125 Summer Street
`Boston, MA 02110
`Tel: 617-345-3000
`Fax: 617-345-3299
`Email: ggoldman@burnslev.com
`
`
`
`Attorney for Petitioner
`
`/s/ Craig R. Smith
`
`
`Craig R. Smith (Reg. No. 45,113)
`LANDO & ANASTASI LLP
`One Main Street
`Cambridge, MA 02142
`Tel: 617-395-7000
`Fax: 617-395-7070
`Email: csmith@lalaw.com
`
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(4) and consent of the Patent Owner, I certify
`
`that on January 29, 2019, in addition to the electronic notification, a copy of the
`
`foregoing JOINT MOTION TO TERMINATE PROCEEDINGS AND JOINT
`
`REQUEST THAT SETTLEMENT AGREEMENT BE TREATED AS BUSINESS
`
`CONFIDENTIAL INFORMATION AND KEPT SEPARATE is being served on
`
`counsel of record for Petitioner by email:
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
` Dated: January 29, 2019
`
`Attorney for Patent Owner
`
`/s/ Gabriel Goldman
`
`Gabriel Goldman (Reg. No. 61,343)
`BURNS & LEVINSON LLP
`125 Summer Street
`Boston, MA 02110
`Tel: 617-345-3000
`Fax: 617-345-3299
`Email: ggoldman@burnslev.com
`
`
`
`7
`
`
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