UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`ZSCALER, INC.,
`Petitioner,
`v.
`SYMANTEC CORPORATION,
`Patent Owner.
`____________
`Case IPR2018-00929
`Patent 6,285,658
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C § 317 AND 37
`C.F.R. §§ 42.72 AND 42.74
`
`4155-1502-6714.2
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`ZSCALER, INC.,
`Petitioner,
`v.
`SYMANTEC CORPORATION,
`Patent Owner.
`____________
`Case IPR2018-00929
`Patent 6,285,658
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C § 317 AND 37
`C.F.R. §§ 42.72 AND 42.74
`
`4155-1502-6714.2
`
`
`
`IPR2018-00929
`U.S. Patent No. 6,285,658
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization of February 4, 2019, Petitioner ZSCALER, INC., (“Petitioner” or
`
`“ZSCALER”) and Patent Owner SYMANTEC CORPORATION (“Patent Owner” or
`
`“Symantec”) (collectively, the “Parties”) jointly move to terminate the present inter
`
`partes review proceeding in light of the Parties’ agreement to terminate this
`
`proceeding.
`
`The Parties have reached an agreement to file a motion to terminate this inter
`
`partes review. The Parties are concurrently filing a true and correct copy of their
`
`written Agreement in connection with this matter as required by statute as Exhibit
`
`1019. The parties certify that there are no other agreements or understandings, oral
`
`or written, between the parties, including any collateral agreements, made in
`
`connection with, or in contemplation of, the termination of the present proceeding.
`
`I.
`
`Legal Standard
`
`An inter partes review proceeding “shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner, unless the
`
`Office has decided the merits of the proceeding before the request for termination is
`
`filed.” 35 U.S.C. § 317(a). A joint motion to terminate generally “must (1) include a
`
`brief explanation as to why termination is appropriate; (2) identify all parties in any
`
`related litigation involving the patents at issue; (3) identify any related proceedings
`
`4155-1502-6714.2
`
`1
`
`
`
`IPR2018-00929
`U.S. Patent No. 6,285,658
`
`currently before the Office, and (4) discuss specifically the current status of each
`
`such related litigation or proceeding with respect to each party to the litigation or
`
`proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26,
`
`at *2 (P.T.A.B. July 28, 2014).
`
`II.
`
`Brief Explanation as to Why Termination is Appropriate
`
`Termination of the present IPR is appropriate as the Board has not yet decided
`
`the merits of the proceeding, the subject patent has been dismissed, with prejudice,
`
`from the litigation between the Parties, and the parties have agreed that it is
`
`appropriate to terminate this proceeding. “Generally, the Board expects that a
`
`proceeding will terminate after the filing of a settlement agreement.” Oracle Corp.
`
`v. Cmty. United IP, LLC, CBM2013-00015, Paper 13 (July 25, 2013) (citing Patent
`
`Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)).
`
`Terminating this proceeding promotes the Congressional goal to establish a more
`
`efficient and streamlined patent system that, inter alia, limits unnecessary and
`
`counterproductive litigation costs. See Patent Office Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012). In view of the dismissal, with prejudice, of the
`
`subject patent from the litigation between the Parties, the absence of any other
`
`pending litigation involving this patent, or any public interest or other factors
`
`militating against termination, termination of this proceeding is justified.
`
`4155-1502-6714.2
`
`2
`
`
`
`IPR2018-00929
`U.S. Patent No. 6,285,658
`
`III. Related Proceedings
`
`With respect to the second, third, and fourth Heartland Training requirements,
`
`the Parties identify the following litigation and proceedings currently before the
`
`Office involving the Parties. There are no parties in these related litigations and
`
`proceedings besides the Parties to this proceeding.
`
`Case Name
`Symantec Corporation and
`
`Court
`Case No.
`3:17-cv-04414 United States
`
`Filed
`August 3,
`
`Symantec Limited v.
`
`Zscaler, Inc.
`
`District Court for
`
`2017
`
`the Northern
`
`District of
`
`California
`
`Symantec Corporation and
`
`1:17-cv-00806 United States
`
`June 22, 2017
`
`Symantec Limited v.
`
`Zscaler, Inc. (transferred to
`
`USDC, N.D.Ca, 3:17-cv-
`
`04414)
`
`District Court for
`
`the District of
`
`Delaware
`
`4155-1502-6714.2
`
`3
`
`
`
`IPR2018-00929
`U.S. Patent No. 6,285,658
`
`Symantec Corporation v.
`
`3:17-cv-04426 United States
`
`August 4,
`
`Zscaler, Inc.
`
`District Court for
`
`2017
`
`the Northern
`
`District of
`
`California
`
`Symantec Corporation v.
`
`1:16-cv-01176 United States
`
`December 12,
`
`Zscaler, Inc. (transferred to
`
`District Court for
`
`2016
`
`USDC, N. D. Ca. 3:17-cv-
`
`004426)
`
`the District of
`
`Delaware
`
`The ‘658 Patent was asserted in the first-listed action above (ND Cal. Case
`
`4414, previously D. Del. Case 806). On December 13, 2018, Symantec dismissed its
`
`claims based on the ‘658 Patent, with prejudice. Symantec Corp. and Symantec Ltd.
`
`v. Zscaler, Inc., 17-cv-04414 (N.D. Cal.), STIPULATION AND ORDER re 148
`
`STIPULATED REQUEST AND [PROPOSED] ORDER DISMISSING
`
`SYMANTEC'S CLAIMS AS TO U.S. PATENT NOS. 6,285,658; 7,360,249; AND
`
`9,525,696 WITH PREJUDICE. D.I. 151. The ‘658 Patent is not at issue in the other
`
`actions listed above, nor in any other currently pending action.
`
`The Parties also provide the following list of other PTAB proceedings between
`
`4155-1502-6714.2
`
`4
`
`
`
`IPR2018-00929
`U.S. Patent No. 6,285,658
`
`the Parties:
`
`IPR NUMBER
`
`PATENT AT ISSUE
`
`FILING DATE
`
`STATUS
`
`IPR2018-00616
`
`8,316,446
`
`February 9, 2018
`
`Terminated
`
`IPR2018-00806
`
`7,587,488
`
`March 20, 2018
`
`Terminated
`
`IPR2018-00912
`
`IPR2018-00913
`
`IPR2018-00916
`
`IPR2018-00920
`
`IPR2018-00930
`
`IPR2017-01342
`
`IPR2017-01345
`
`8,316,429
`
`8,316,429
`
`7,360,249
`
`9,525,696
`
`8,402,540
`
`8,661,498
`
`7,392,543
`
`April 11, 2018
`
`April 11, 2018
`
`April 12, 2018
`
`April 14, 2018
`
`Instituted
`
`Instituted
`
`Instituted
`
`Instituted
`
`April 16, 2018
`
`Terminated
`
`May 1, 2017
`
`Terminated
`
`May 1, 2017
`
`Terminated
`
`IPR2017-01763
`
`7,735,116
`
`July 11, 2017
`
`Terminated
`
`IPR2018-00136
`
`7,203,959
`
`October 30, 2017
`
`Terminated
`
`IPR2018-00137
`
`7,203,959
`
`October 30, 2017
`
`Terminated
`
`The ‘658 Patent is only at issue in the instant proceeding. The other
`
`proceedings listed above are on unrelated patents.
`
`4155-1502-6714.2
`
`5
`
`
`
`IPR2018-00929
`U.S. Patent No. 6,285,658
`
`Dated: February 6, 2019
`
`ORRICK, HERRINGTON & SUTCLIFFE, LLP
`
`By:
`
`Jeremy Jason Lang, Reg. No. 73,064
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`T: (650) 614-7400
`F: (650) 614-7401
`Email: PTABDocketJJL2@orrick.com
`
`Don Daybell, Reg. No. 50,877
`Email: D2DPTABDocket@orrick.com
`Johannes Hsu, Reg. No. 74,689
`Email: PTABDocketJ1H1@orrick.com
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Main: (949) 567-6700
`Fax: (949) 567-6710
`
`Jared Bobrow, to appear pro hac vice
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`T: (650) 614-7400
`F: (650) 614-7401
`Email: PTABDocketJ3B3@orrick.com
`
`Attorneys for Petitioner Zscaler, Inc.
`
`4155-1502-6714.2
`
`6
`
`
`
`IPR2018-00929
`U.S. Patent No. 6,285,658
`
`Dated: February 6, 2019
`
`BAKER BOTTS L.L.P.
`
`By:
`Chad C. Walters, Reg. No. 48,022
`2001 Ross Avenue, Suite 900
`Dallas, TX 75201
`T: (214) 953-6511
`Email: chad.walters@bakerbotts.com
`
`Kurt M. Pankratz
`Email: kurt.pankratz@bakerbotts.com
`Kathryn A. Juffa
`Email: katie.juffa@bakerbotts.com
`Bryan D. Parrish
`Email: bryan.parrish@bakerbotts.com
`
`Attorneys for Patent Owner Symantec
`Corporation
`
`4155-1502-6714.2
`
`7
`
`
`
`IPR2018-00929
`U.S. Patent No. 6,285,658
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that “JOINT MOTION TO TERMINATE
`
`PURSUANT TO 35 U.S.C § 317 AND 37 C.F.R. §§ 42.72 AND 42.74” was served
`
`in its entirety on February 6, 2019, upon the following parties via electronic service:
`
`Chad C. Walters (Lead)
`Kurt M. Pankratz
`Kathryn A. Juffa
`Bryan D. Parrish
`BAKER BOTTS L.L.P.
`2001 Ross Ave., Suite 700
`Dallas, TX 75201
`
`Email: chad.walters@bakerbotts.com
`Email: kurt.pankratz@bakerbotts.com
`Email: katie.juffa@bakerbotts.com
`Email: bryan.parrish@bakerbotts.com
`Email: jillian.powell@bakerbotts.com
`
`Attorneys for Patent Owner Symantec Corporation
`
`By: /Karen L. Johnson/
` Karen L. Johnson
`
`4155-1502-6714.2
`
`8
`
`
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