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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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`_________________________
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`UNIFIED PATENTS INC.
`Petitioner
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`v.
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`Recursive Web Technologies, LLC
`Patent Owner
`
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`IPR2019-00472
`U.S. 7,454,430
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`JOINT MOTION TO DISMISS
`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 Unified
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`IPR2019-00472
`U.S. 7,454,430
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`Patents Inc. (“Unified”) and Patent Owner Recursive Web Technologies, LLC
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`(“Recursive”) jointly request termination of the Inter Partes Review of U.S. Patent
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`7,454,430 in IPR2019-00472.
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`Petitioner and Patent Owner have entered into a written confidential
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`settlement agreement that fully resolves this matter. The Parties are concurrently
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`filing a copy of the settlement agreement as EX1019 along with a request to treat it
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`as confidential business information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(c). The undersigned represents that there are no other agreements, oral or
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`written, between the parties made in connection with, or in contemplation of, the
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`termination of the present proceeding and that EX1019 represents a true and accurate
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`copy of the agreement between the parties that resolves the present proceeding.
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`On April 8, 2019 the Parties informed the Board of the settlement via e-mail
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`and requested authorization to file a join motion to dismiss the proceeding with
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`respect to both the Patent Owner and the Petitioner. As set forth in an e-mail dated
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`April 10, 2019, the Board authorized the filing of the requested joint motion to
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`dismiss this proceeding as to both parties. Accordingly, Petitioner and Patent Owner
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`jointly request termination of the present proceeding.
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`Public policy favors terminating the present inter partes review proceeding.
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`Congress and federal courts have expressed a strong interest in encouraging
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`1
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`settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
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`IPR2019-00472
`U.S. 7,454,430
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`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
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`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The
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`law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal
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`Circuit places a particularly strong emphasis on settlement. See Cheyenne River
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`Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors
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`settlement to reduce antagonism and hostility between parties). And, the Board’s
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`Trial Practice Guide stresses that “[t]here are strong public policy reasons to favor
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`settlement between the parties to a proceeding.” Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Dismissing
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`this IPR petition and
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`terminating review promotes
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`the
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`congressional goal of establishing a more efficient patent system by limiting
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`unnecessary and counterproductive costs. See Changes to Implement Inter Partes
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`Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for
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`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012). Permitting
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`termination as to all parties provides certainty and fosters an environment that
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`promotes settlements, creating a timely, cost-effective alternative to litigation.
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`Additionally, termination of this IPR is appropriate as the Board has not
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`reached a decision on institution, and it has not yet “decided the merits of the
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`proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
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`2
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`48768 (Aug. 14, 2012). Unified filed its petition for inter partes review on December
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`IPR2019-00472
`U.S. 7,454,430
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`29, 2018. 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 termination
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`of this proceeding.
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`Therefore, Unified and Recursive respectfully request termination of this Inter
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`Partes Review of U.S. Patent 7,454,430 (IPR2019-00472).
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`3
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`Date: April 15, 2019
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` Respectfully submitted,
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`IPR2019-00472
`U.S. 7,454,430
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`/s/ Roshan S. Mansinghani
`Roshan S. Mansinghani, Reg. No. 62,429
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`(214) 945-0200
`roshan@unifiedpatents.com
`Counsel for Petitioner
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`
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`/RABaker/_________________________
`Richard A. Baker, Jr., Reg. No. 48,124
`New England Intellectual Property, LLC
`291 Main Street
`West Newbury, MA 01985
`978-363-1700
`rbaker@newenglandip.com
`Counsel for Patent Owner
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`4
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`IPR2019-00472
`U.S. 7,454,430
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`Appendix of Exhibits
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`Exhibit 1001
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`Exhibit 1002
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`Exhibit 1003
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`Exhibit 1004
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`Exhibit 1005
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`Exhibit 1006
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`U.S. Patent 7,454,430 (“’430 Patent”)
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`File History for U.S. Patent 7,454,430 (“File History”)
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`Declaration of Dr. Padhraic Smyth (“Smyth Decl.”)
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`Curriculum Vitae of Dr. Padhraic Smyth (“Smyth CV”)
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`U.S. Pub. US 2002/0083068 to Quass et al. (“Quass”)
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`U.S. Patent 6,411,952 to Bharat et al. (“Bharat”)
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`Exhibit 1007
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`U.S. Patent 6,266,668 to Vanderveldt et al. (“Vanderveldt”)
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`Exhibit 1008
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`Chakrabarti et. al, Enhanced Hypertext Categorization Using
`Hyperlinks, Proceedings of the 1998 ACM SIGMOD international
`conference on Management of Data, pp. 307-318 (“EHC”)
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`Exhibit 1009
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`Exhibit 1010
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`Exhibit 1011
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`Exhibit 1012
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`Bergholz et al., Crawling for Domain-Specific Hidden Web
`Resources, January 2003 (“Bergholz”)
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`Baldi et al., Modeling the Internet and the Web, July 2003
`(“Baldi”)
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`Declaration of Jacob R. Munford (“Munford Decl.”)
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`Declaration of Gerard Grenier (“Grenier Decl.”)
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`Exhibit 1013
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`U.S. Pub. US 2002/0078136 to Brodsky et al (“Brodsky”)
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`Exhibit 1014
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`PCT App. No. WO 02/50703 A1 to Green et al. (“Green”)
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`Exhibit 1015
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`Exhibit 1016
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`U.S. Patent 6,658,402 to Dutta (“Dutta”)
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`PCT App. No. WO 03/046755 A1 to Phelan (“Phelan”)
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`5
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`IPR2019-00472
`U.S. 7,454,430
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`Exhibit 1017 Chakrabarti et. Al, Automatic Resource Compilation by Analyzing
`Hyperlink Structure and Associated Text, Computer Networks and
`ISDN Systems 30 (1-7) pp. 65-74 (“ARC”)
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`Exhibit 1018
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`Exhibit 1019
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`Petitioner’s Voluntary Interrogatory Responses
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`Confidential Settlement and License Agreement
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`6
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`IPR2019-00472
`U.S. 7,454,430
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Joint
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`Motion to Dismiss the Proceeding for Inter Partes Review of U.S. Patent
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`7,454,430 was served on April 15, 2019 via electronic mail directed to the
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`attorney of
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`record
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`for
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`the patent at
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`the
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`following addresses:
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`rbaker@newenglandip.com. Patent Owner has consented to electronic
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`service.
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`/s/ Roshan S. Mansinghani
`Roshan S. Mansinghani, Reg. No. 62,429
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`(214) 945-0200
`roshan@unifiedpatents.com
`Counsel for Petitioner
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`1
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