`(309101-2276)
`
`
`
`
`
`IPR2019-00344
`U.S. Patent No. 9,772,814
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`HYPERMEDIA NAVIGATION LLC
`Patent Owner
`
`
`
`Case IPR2019-00344
`U.S. Patent No. 9,772,814
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`1
`
`
`
`Atty Docket No. FABO-087/00US
`(309101-2276)
`I.
`
`
`
`
`IPR2019-00344
`U.S. Patent No. 9,772,814
`
`
`STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, and the authorizing
`
`email communication from Andrew Kellogg of January 15, 2019, Petitioner
`
`Facebook, Inc. (“Facebook”) and Patent Owner Hypermedia Navigation, LLC
`
`(“Hypermedia”) jointly request termination of Inter Partes Review IPR2019-00344
`
`seeking review of U.S. Patent No. 9,772,814 (“the ’814 Patent”).
`
`II.
`
`STATEMENT OF FACTS
`Review has not been instituted in this matter. Facebook’s petition for review
`
`was accorded the filing date of November 16, 2018. Hypermedia has not filed a
`
`preliminary response and one is not due until March 7, 2019. Effective December
`
`31, 2018, the parties reached settlement of certain adversarial matters between them
`
`(“Settlement Agreement,” see infra). Specifically, the parties agreed to terminate
`
`the following adversarial matters:
`
`• An action in the United States District Court for the Northern District of
`
`California, Case No. 4:17-cv-5383-HSG, regarding Hypermedia’s
`
`allegation of infringement of the ʼ814 Patent and U.S. Patent Nos.
`
`7,383,323, 7,383,324, 7,424,523, 7,478,144, 7,769,830, 8,250,173,
`
`9,083,672, and 9,864,575; and the alleged invalidity and unenforceability
`
`of those patents; and
`
`
`
`2
`
`
`
`Atty Docket No. FABO-087/00US
`
`IPR2019-00344
`(309101-2276)
`
`U.S. Patent No. 9,772,814
`
`• This Inter Partes Review action and Inter Partes Review actions
`
`pertaining the other above-listed patents.
`
`III. ARGUMENT
`A. Termination of this IPR is Appropriate
`The Board should terminate this proceeding for at least the following reasons.
`
`First, the statutory condition for termination under 35 U.S.C. § 317(a) is
`
`satisfied – this joint request for termination is being filed before the Board has
`
`decided the merits of the proceeding. Indeed, the Board has not yet issued a decision
`
`on the petition to institute a review.
`
`Second, the parties have agreed to terminate this proceeding, in connection
`
`with their Settlement Agreement.
`
`Third, the merits of the petition have not been determined, no motions or other
`
`matters are outstanding, and concluding this review at this early juncture promotes
`
`efficient use of the resources of the Board and saves expense for the parties.
`
`B. A True Copy of the Parties’ Settlement Agreement is Filed
`Herewith
`The parties’ Settlement Agreement has been made in writing, and a true and
`
`
`
`correct copy is filed herewith as business confidential information pursuant to 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), as Exhibit 2001. A Joint Request to File
`
`a Settlement Agreement as Business Confidential Information under 35 U.S.C. §
`
`317(b) and 37 C.F.R. § 42.74(c) is also being filed herewith.
`
`
`
`3
`
`
`
`Atty Docket No. FABO-087/00US
`(309101-2276)
`C. Estoppel
`No estoppel under 35 U.S.C. § 315(e) shall attach to Petitioner Facebook
`
`IPR2019-00344
`U.S. Patent No. 9,772,814
`
`
`
`
`
`pursuant to 35 U.S.C. § 317(a).
`
`D.
`Summary
`For the foregoing reasons, Facebook and Hypermedia jointly and respectfully
`
`request termination of Case No. IPR2019-00344 involving U.S. Patent No.
`
`9,772,814.
`
`
`
`DATE: JANUARY 18, 2019
`
`
`
`
`DATE: JANUARY 18, 2019
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`Cooley LLP
`
`
`
`
`By: /Heidi L. Keefe/
`
`Heidi L. Keefe
`
`Reg. No. 40,673
`Counsel for Petitioner
`
`
`
`
`Respectfully submitted,
`Wach LLP
`
`
`By: /Michael L. Wach/
`
`Michael L. Wach
`
`Reg. No. 54,517
`Counsel for Patent Owner
`
`
`
`4
`
`
`
`Atty Docket No. FABO-087/00US
`(309101-2276)
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2019-00344
`U.S. Patent No. 9,772,814
`
`
`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`the attached JOINT MOTION TO TERMINATE PROCEEDING and related
`documents, are being served via electronic mail on the 18th day of January, 2019,
`upon the Patent Owner’s attorneys of record in this proceeding as follows:
`
`Michael L. Wach (Reg. No. 54,517)
`mikewachsr@gmail.com
`WACH LLC
`
`Jason M. Perilla (Reg. No. 65,731)
`jason.perilla@thomashorstemeyer.com
`THOMAS ǀ HORSTEMEYER LLP
`
`Adam L. Baumli (Reg. No. 64,433)
`adam@baumlilawfirm.com
`BAUMLI LAW FIRM PLLC
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`DATED: January 18, 2019
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`5
`
`
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