UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`HYPERMEDIA NAVIGATION LLC,
`Patent Owner.
`
`_________________
`
`Case IPR2018-01519
`Patent 9,772,814
`
`_________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING AND
`JOINT REQUEST TO TREAT THE PARTIES’ AGREEMENT (EX. 1024)
`AS BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`HYPERMEDIA NAVIGATION LLC,
`Patent Owner.
`
`_________________
`
`Case IPR2018-01519
`Patent 9,772,814
`
`_________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING AND
`JOINT REQUEST TO TREAT THE PARTIES’ AGREEMENT (EX. 1024)
`AS BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`
`
`
`IPR2018-01519, Patent 9,772,814
`
`LIST OF EXHIBITS
`
`No.
`
`Description
`
`1024
`
`
`
`Agreement between Microsoft Corporation and Hypermedia
`Navigation LLC, signed September 17, 2018 (Business
`Confidential Information, to be kept separate)
`
`
`
`Joint Motion to Terminate and Request to Treat Confidential
`
`Page i
`
`
`
`IPR2018-01519, Patent 9,772,814
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to authorization provided by the Board in a conference call of
`
`October 30, 2018, Patent Owner Hypermedia LLC (“Patent Owner”) and Petitioner
`
`Microsoft Corporation (“Petitioner”) (collectively, the “Parties”) through this paper
`
`jointly:
`
`1. Move for termination of this proceeding, without prejudice to
`
`either Party, pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74;
`
`and
`
`2.
`
`Request that the Agreement between the Parties (Ex. 1024) be
`
`treated as Business Confidential Information that shall be kept
`
`separate from the file of the involved patent, pursuant to 35
`
`U.S.C. § 317(b), 37 C.F.R. § 42.74(c).
`
`Prior to filing this motion, undersigned counsel for Petitioner obtained
`
`permission from undersigned counsel for Patent Owner to add his signature
`
`and file this motion and request jointly on behalf of the parties.
`
`II.
`
`JOINT MOTION FOR TERMINATION
`
`Petitioner filed its petition for inter partes review on August 10, 2018 (Paper
`
`2). On September 17, 2018, the parties settled their dispute, and agreed to terminate
`
`this inter partes review and related inter partes reviews numbered Cases IPR2018-
`
`01537 and IPR2018-01518. On September 18, 2018, the undersigned counsel
`
`Joint Motion to Terminate and Request to Treat Confidential
`
`Page 1
`
`
`
`IPR2018-01519, Patent 9,772,814
`
`contacted the Board by email seeking permission to file this motion and request.
`
`Also on September 18, 2018, a district court order dismissed Patent Owner’s patent
`
`infringement lawsuit against Petitioner, with Patent Owner’s claims dismissed with
`
`prejudice and Petitioner’s defenses dismissed without prejudice. See Hypermedia
`
`Navigation LLC v. Microsoft Corporation, 4:18-cv-00670 (N.D. Cal.). There is no
`
`litigation contemplated in the foreseeable future between Patent Owner and
`
`Petitioner in view of the Agreement.
`
`On October 30, 2018, the Board conducted a telephone conference during
`
`which Patent Owner was represented by counsel Mike Wach and Petitioner was
`
`represented by counsel Andrew Mason. During that conference call, the Board
`
`authorized the parties to file this joint motion and request.
`
`Termination of these proceedings is proper at this stage because (a) the Board
`
`has not decided the merits of this proceeding, and (b) the Petitioner and Patent Owner
`
`are making this joint request under 35 U.S.C. § 317. See also Office Patent Trial
`
`Practice Guide, Section II (N) (“There are strong public policy reasons to favor
`
`settlement between the parties to a proceeding. The Board will be available to
`
`facilitate settlement discussions, and where appropriate, may require a settlement
`
`discussion as part of the proceeding. The Board expects that a proceeding will
`
`terminate after the filing of a settlement agreement, unless the Board has already
`
`Joint Motion to Terminate and Request to Treat Confidential
`
`Page 2
`
`
`
`decided the merits of the proceeding. 35 U.S.C. 317(a), as amended, and 35 U.S.C.
`
`IPR2018-01519, Patent 9,772,814
`
`327.”)
`
`Pursuant to 37 C.F.R. § 42.74, a copy of the parties’ Agreement (Ex. 1024,
`
`business confidential information, for Board and parties only) is being filed
`
`concurrently with this motion and request.
`
`For at least these reasons, termination of the Inter Partes Review is
`
`appropriate under 35 U.S.C. § 317 and 37 C.F.R. § 42.74.
`
`III. JOINT REQUEST TO TREAT THE PARTIES’ AGREEMENT
`(EX. 1024) AS BUSINESS CONFIDENTIAL INFORMATION
`
`The parties request, pursuant to 37 C.F.R. § 42.74(c), that the Agreement
`
`(Ex. 1024) be treated as confidential business information and kept separate under
`
`the Board’s default Protective Order. The Agreement lays out confidential terms
`
`agreed to by the parties in settling their differences regarding the challenged patent,
`
`and constitutes confidential information under the Board’s rules. See 37 C.F.R. §
`
`42.54; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14,
`
`2012). Accordingly, that Agreement has been filed for access by the “Parties and
`
`Board Only” and the Parties jointly submit that the Agreement should be treated as
`
`Joint Motion to Terminate and Request to Treat Confidential
`
`Page 3
`
`
`
`business confidential information and kept separate, pursuant to 35 U.S.C. § 317(b)
`
`IPR2018-01519, Patent 9,772,814
`
`and 37 C.F.R. § 42.74(c).
`
`IV. CONCLUSION
`
`There are no other petitioners in these inter partes reviews, and no final
`
`written decision on the merits has been entered. For at least these reasons,
`
`termination of this inter partes review is proper under 35 U.S.C. § 317 and 37 C.F.R.
`
`§ 42.74. Should this joint motion to terminate be denied, Petitioner would not
`
`continue to participate in this proceeding.
`
`At least due to its confidential nature, the parties’ Agreement (Ex. 1024)
`
`should be treated as confidential business information and kept separate, pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`As stated in 35 U.S.C. § 317(a) and 37 C.F.R. § 42.73(d), because Patent
`
`Owner and Petitioner jointly request this termination, no estoppel under 35 U.S.C. §
`
`315(e) shall attach to the Petitioner.
`
`Respectfully submitted,
`
`October 31, 2018
`
`By: /Andrew M. Mason/
`Andrew M. Mason (Registration No. 64,034)
`andrew.mason@klarquist.com
`Todd M. Siegel (Registration No. 73,232)
`todd.siegel@klarquist.com
`Derrick W. Toddy (Registration No. 74,591)
`derrick.toddy@klarquist.com
`Garth A. Winn (Registration No. 33,220)
`garth.winn@klarquist.com
`John D. Vandenberg (Registration No. 31,312)
`
`Joint Motion to Terminate and Request to Treat Confidential
`
`Page 4
`
`
`
`IPR2018-01519, Patent 9,772,814
`
`john.vandenberg@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`
`
`October 31, 2018
`
`By: /Michael L. Wach/
`Michael L. Wach (Registration No. 54,517)
`mwach@wachllc.com
`Wach LLC
`4425 Mariners Ridge
`Alpharetta, GA 30005
`Tel: (770) 846-9238
`Fax: (770) 951-0933
`
`Jason M. Perilla (Registration No. 65,731)
`jason.perilla@thomashorstemeyer.com
`THOMAS | HORSTEMEYER, LLP
`Thomas | Horstemeyer, LLP
`3200 Windy Hill Rd. Ste. 1600E
`Atlanta, GA 30339
`Tel: (770) 933-9500
`Fax: (770) 951-0933
`
`Adam L. Baumli (Registration No. 64,433)
`adam@baumlilawfirm.com
`Baumli Law Firm PLLC
`17330 Preston Rd. Suite 200D
`Dallas, Texas 75252
`Tel: (214) 870-1240
`Fax: (214) 594-8722
`
`Counsel for Patent Owner
`
`Joint Motion to Terminate and Request to Treat Confidential
`
`Page 5
`
`
`
`IPR2018-01519, Patent 9,772,814
`
`CERTIFICATE OF SERVICE
`IN COMPLIANCE WITH 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that on October 31, 2018, a complete copy of
`
`JOINT MOTION TO TERMINATE PROCEEDING AND JOINT REQUEST TO
`
`TREAT THE PARTIES’ AGREEMENT
`
`(EX. 1024) AS BUSINESS
`
`CONFIDENTIAL INFORMATION with Exhibit 1024 was served on counsel for
`
`Patent Owner via electronic mail as follows:
`
`Michael L. Wach, mikewachsr@gmail.com
`Jason M. Perilla, jason.perilla@thomashorstemeyer.com
`Adam L. Baumli, adam@baumlilawfirm.com
`
`
`
`
`
`
`
`By: /Andrew M. Mason/
`Andrew M. Mason (Registration No. 64,034)
`andrew.mason@klarquist.com
`Todd M. Siegel (Registration No. 73,232)
`todd.siegel@klarquist.com
`Derrick W. Toddy (Registration No. 74,591)
`derrick.toddy@klarquist.com
`Garth A. Winn (Registration No. 33,220)
`garth.winn@klarquist.com
`John D. Vandenberg (Registration No. 31,312)
`john.vandenberg@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`
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