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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`TRICAM INDUSTRIES, INC.
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`Petitioner,
`v.
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`WING ENTERPRISES, INC.
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`Patent Owner.
`______________
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`Case No.: IPR2018-01070
`Patent No. 7,364,017
`______________
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`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a) AND 37 C.F.R. § 42.71(a)
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.71(a), Petitioner Tricam
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`Industries, Inc. and Patent Owner Wing Enterprises, Inc., jointly request
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`termination of the inter partes review of U.S. Patent 7,364,017 in IPR2018-01070.
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`Petitioner and Patent Owner (“the Parties”) have executed a written
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`confidential settlement agreement that fully resolves this matter. On July 30, 2018
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`the Parties informed the Board of the settlement via e-mail and requested
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`authorization to file a joint motion to terminate the proceeding with respect to both
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`the Patent Owner and the Petitioner. As set forth in an e-mail dated July 31, 2018,
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`the Board authorized the filing of the requested joint motion to terminate this
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`proceeding as to both parties. Accordingly, Petitioner and Patent Owner jointly
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`request termination of the present proceeding.
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`The Parties are concurrently filing a copy of the settlement agreement as EX
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`1010, along with a request to treat the settlement agreement as confidential
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`business information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The
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`undersigned represents that there are no other agreements, oral or written, between
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`the parties made in connection with, or in contemplation of, the termination of the
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`present proceeding and that EX 1010 represents a true and accurate copy of the
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`agreement between the parties that resolves the present proceeding.
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`The e-mail dated July 31, 2018 from the Board further requested an update
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`“concerning the status of any district court action or other administrative
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`1
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`proceeding involving the patent at issue in this proceeding.” The only other
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`proceeding involving the patent at issue in this proceeding is the district court
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`action identified in the Parties’ respective mandatory notices: Wing Enterprises,
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`Inc. dba Little Giant Ladder Systems v. Tricam Industries, Inc., Case No. 0:17-CV-
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`01769-WMW-LIB, (D. Minn.) The Parties represent that the current status of that
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`action is as follows: all patent-related claims and counterclaims were dismissed
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`with prejudice in an Order dated July 30, 2018. That case is still pending with
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`respect to other, non-patent causes of action.
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`Termination of this IPR is appropriate as the Board has not reached a
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`decision on institution, and it has not yet “decided the merits of the proceeding.”
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`See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14,
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`2012). The parties have now settled their dispute, and have reached agreement to
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`terminate this inter partes review. The USPTO can conserve its resources through
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`terminating the proceedings now, removing the need for the Board to further
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`consider the arguments, to issue an Institution Decision, or to render a Final
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`Decision. Furthermore, no other party’s rights will be prejudiced by the
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`termination of this proceeding.
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`2
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`Therefore, the Parties jointly request termination of this inter partes review
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`of U.S. Patent 7,364,017 (IPR2018-01070).
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`Dated: August 2, 2018
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`Dated: August 2, 2018
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`Respectfully submitted,
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`/Mike P. Gates/
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`Mike P. Gates
`Reg. No. 60,194
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`Attorney for Petitioner
`Tricam Industries, Inc.
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`Respectfully submitted,
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`/Mark M. Miller/
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`Mark M. Miller
`Reg. No. 44,944
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`Attorney for Patent Owner
`Wing Enterprises, Inc.
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`3
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that “JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(A) AND 37 C.F.R. § 42.71(a)” for the above-
`captioned matter was served in its entirety on August 2, 2018, upon the following
`parties via e-mail:
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`Mark Miller - miller.mark@dorsey.com
`Bradley Jensen - jensen.brad@dorsey.com
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`Dated: August 2, 2018
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`/Mike P. Gates/
`Mike P. Gates
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`2458137.docx
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