`Patent No. 7,956,736
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IPDATATEL, LLC; ALULA HOLDINGS, LLC; AND
`RESOLUTION PRODUCTS, LLC;
`Petitioner,
`v.
`ICN ACQUISITION, LLC,
`Patent Owner
`
`
`
`
`
`Case No. IPR2018-01820
`Patent No. 7,956,736
`
`
`
`
`
`Filed and Served: July 3, 2019
`
`
`JOINT MOTION TO TERMINATE
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`
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`
`
`
`
`
`
`IPR2018-01820
`Patent No. 7,956,736
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Patent Owner ICN
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`Acquisition, LLC and Petitioners ipDataTel, LLC; Alula Holdings, LLC; and
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`Resolution Products, LLC jointly request termination of this inter partes review
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`(“IPR”) concerning U.S. Patent No. 7,956,736 (“the “Patent-in-Review”) with
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`respect to both Patent Owner and Petitioners. On July 2, 2019, the Board
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`authorized the Parties to file this joint motion to terminate.
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`The Parties have agreed to settle their dispute and have reached a written
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`agreement (the “Settlement Agreement”) to terminate this IPR, subject to the
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`Board’s approval. The Petitioners are filing, confidentially, a true and correct copy
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`of the Settlement Agreement contemporaneously herewith as Exhibit 1048. There
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`are no collateral agreements or understandings in connection with, or in
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`contemplation of, the termination of this proceeding. The Petitioners are also filing
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`a joint request that the Settlement Agreement be treated as business confidential
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`information and be kept separate from the file of the Patent-in-Review, pursuant to
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). It is understood that the Settlement
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`Agreement as filed shall be available only to (1) a Government agency on written
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`request to the Board; or (2) any person upon written request to the Board to make
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`the Settlement Agreement available, along with the fee specified in 37 C.F.R.
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`§ 42.15(d) and on a showing of good cause. The parties represent that they have
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`complied with all requirements of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
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`
`
`IPR2018-01820
`Patent No. 7,956,736
`The Petitioners filed their petition on September 28, 2018, and Patent Owner
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`filed a preliminary response on January 18, 2019. The Board instituted review on
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`all claims of the Patent-in-Review on April 17, 2019. The Patent Owner’s response
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`is due July 10, 2019.
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`Termination of this proceeding is proper because the proceeding is in its
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`early stages. The Board has only recently instituted trial, and Patent Owner has not
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`yet filed its Patent Owner Response. Thus, the Board has not yet “decided the
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`merits of the proceeding before the request for termination is filed.” 35 U.S.C.
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`§ 317(a); Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14,
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`2012) (“The Board expects that a proceeding will terminate after the filing of a
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`settlement agreement, unless the Board has already decided the merits of the
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`proceeding.”); see also Oracle Corp. v. Community United IP, LLC, Case No.
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`CBM2013-00015, Paper No. 13 (PTAB Jul. 25, 2013) (citing, 77 Fed. Reg. 48768
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`(Aug. 14, 2012)).
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`The Parties were also involved in litigation before the United States District
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`Court for the Southern District of Texas under the caption Alarm.com Incorporated
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`and ICN Acquisition, LLC v. ipDataTel, Civil Action No. 4:18-cv-02108, which
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`concerned the Patent-in-Review. The parties are contemporaneously seeking
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`dismissal of that lawsuit.
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`
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`IPR2018-01820
`Patent No. 7,956,736
`For the reasons described above, the Parties respectfully request termination
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`of this proceeding.
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`Dated: July 3, 2019
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`By:
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`
` /Walter C. Linder/
`Walter C. Linder (Reg. No. 31,707)
`Braden M. Katterheinrich (Reg. No.
`63,814)
`James Poradek (pro hac vice)
`Timothy M. Sullivan (pro hac vice)
`Faegre Baker Daniels
`2200 Wells Fargo Center
`90 S. Seventh Street
`Minneapolis, Minnesota 55402
`Tel: (612) 766-7000
`Fax: (612) 766-1600
`Walter.Linder@faegrebd.com
`Braden.Katterheinrich@faegrebd.com
`James.Poradek@faegrebd.com
`Timothy.Sullivan@faegrebd.com
`
`Counsel for Petitioners
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`
`
`
`/s/ Matthew A. Argenti
`Matthew A. Argenti (Reg. No. 61,836)
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel.: (650) 493-9300
`margenti@wsgr.com
`
`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on July 3, 2019, I caused
`a true and correct copy of the Joint Motion to Terminate to be served via email, as a
`PDF attachment, to counsel for the Patent Owner, as follows:
`Matthew A. Argenti
`Quincy Lu
`margenti@wsgr.com
`qalu@wsgr.com
`
`Michael T. Rosato
`mrosato@wsgr.com
`
`
`
`FAEGRE BAKER DANIELS LLP
`By: /Walter C. Linder/
`
`
`Walter C. Linder (Reg. No. 31,707)
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`
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`Dated: July 3, 2019
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`4
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