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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`CHECKSUM VENTURES, LLC.
`Patent Owner
`
`
`IPR2019-00491
`U.S. 8,301,906
`
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`JOINT MOTION TO DISMISS
`UNDER 35 U.S.C. § 317(a) AND 37 C.F.R. § 42.71(a)
`
`
`
`
`IPR2019-00491
`U.S. 8,301,906
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.71(a), Petitioner
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`Unified Patents Inc. (“Unified”) and Patent Owner Checksum Ventures LLC
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`(“Checksum”) jointly request termination of the Inter Partes Review of U.S.
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`Patent 8,301,906 in IPR2019-00491.
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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
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`concurrently filing a copy of the settlement agreement as EX1022 along with
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`a request to treat it as confidential business information pursuant to 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(c). The undersigned represents that there are
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`no other agreements, oral or written, between the parties made in connection
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`with, or in contemplation of, the termination of the present proceeding and
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`that EX1022 represents a true and accurate copy of the agreement between the
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`parties that resolves the present proceeding.
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`On April 1, 2019 the Parties informed the Board of the settlement via
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`e-mail and requested authorization to file a join motion to terminate the
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`proceeding with respect to both the Patent Owner and the Petitioner. As set
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`forth in an e-mail dated April 3, 2019, the Board authorized the filing of the
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`requested joint motion to terminate this proceeding as to both parties.
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`Accordingly, Petitioner and Patent Owner jointly request termination of the
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`present proceeding.
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`1
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`IPR2019-00491
`U.S. 8,301,906
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`Public policy favors terminating the present inter partes review
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`proceeding. Congress and federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August,
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`450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage
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`the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577
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`(Fed. Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S.
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`950 (1986). The Federal Circuit places a particularly strong emphasis on
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`settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed.
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`Cir. 1986) (noting that the law favors settlement to reduce antagonism and
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`hostility between parties). And, the Board’s Trial Practice Guide stresses that
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`“[t]here are strong public policy reasons to favor settlement between the
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`parties to a proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 46,768 (Aug. 14, 2012).
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`Dismissing this IPR petition and terminating review promotes 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
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`Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
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`Program for Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug.
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`14, 2012). Permitting termination as to all parties provides certainty and
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`fosters an environment that promotes settlements, creating a timely, cost-
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`2
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`effective alternative to litigation.
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`IPR2019-00491
`U.S. 8,301,906
`
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`Additionally, termination of this IPR is appropriate as the Board has
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`not reached a decision on institution, and it has not yet “decided the merits of
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`the proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48756, 48768 (Aug. 14, 2012). Unified filed its petition for inter partes review
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`on December 31, 2018. The parties have now settled their dispute, and have
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`reached agreement to terminate this inter partes review. The USPTO can
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`conserve its resources through terminating the proceedings now, removing the
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`need for the Board to further consider the arguments, to issue an Institution
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`Decision, or to render a Final Decision. Furthermore, no other party’s rights
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`will be prejudiced by the termination of this proceeding.
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`Therefore, Unified and CryptoPeak respectfully request termination of
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`this Inter Partes Review of U.S. Patent 8,301,906 (IPR2019-00491).
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`3
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`Date: April 4, 2019
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` Respectfully submitted,
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`IPR2019-00491
`U.S. 8,301,906
`
`
`
`
`
`
`/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
`
`
`/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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`
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`4
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`
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`IPR2019-00491
`U.S. 8,301,906
`
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`LIST OF EXHIBITS
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`Description
`U.S. Patent No. 8,301,906 to Eckleder et al. (“the ’906
`patent”)
`Declaration of Dr. Paul Franzon, Ph.D. (“Franzon”)
`Curriculum Vitae of Dr. Paul Franzon, Ph.D.
`Excerpts of the Prosecution History of U.S. Patent
`No.8,301,906
`Petitioner’s Voluntary Interrogatory Responses
`U.S. Patent No 7,020,835 (“Loaiza”)
`U.S. Patent No. 7,937,404 (“Tripathi”)
`U.S. Patent No. 6,963,976 (“Jutla”)
`Ground 1 Claim Chart
`Ground 2 Claim Chart
`U.S. Patent No. 5,235,585 (“Bish”)
`Reserved
`Reserved
`N. R. Saxena and E. J. McCluskey, "Analysis of
`checksums, extended-precision checksums, and cyclic
`redundancy checks," in IEEE Transactions on
`Computers, vol. 39, no. 7, pp. 969-975, July 1990.
`J. Fletcher, “An Arithmetic Checksum for Serial
`Transmissions,” in IEEE Transactions on
`Communications, vol. 30, no. 1, pp. 247-252, January
`1982.
`D. E. Denning, “Cryptographic Checksums for
`Multilevel Database Security,” 1984 IEEE Symposium
`on Security and Privacy, Oakland, CA, USA, 1984, pp.
`52-52.
`“Data interchange on read-only 120 mm optical data
`disks (CD-ROM)”, Standard ECMA-130, 2nd Edition
`(June 1996)
`“CD and DVD Forensics”, by P Crowley and L.
`Liebrock (2006, Syngress)
`U.S. Patent Application 2003/0023933 A1 (“Duncan”)
`U.S. Patent No. 5,664,189 (“Wilcox”)
`Ground 3 Claim Chart
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`5
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`Exhibit
`EX1001
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`EX1002
`EX1003
`EX1004
`
`EX1005
`EX1006
`EX1007
`EX1008
`EX1009
`EX1010
`EX1011
`EX1012
`EX1013
`EX1014
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`EX1015
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`EX1016
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`EX1017
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`EX1018
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`EX1019
`EX1020
`EX1021
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`IPR2019-00491
`U.S. 8,301,906
`
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`Confidential Settlement and License Agreement
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`EX1022
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`6
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`CERTIFICATE OF SERVICE
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`IPR2019-00491
`U.S. 8,301,906
`
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`The undersigned hereby certifies that a copy of the foregoing Joint
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`Motion to Terminate the Proceeding for Inter Partes Review of U.S. Patent
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`8,301,906 was served on April 4, 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
`
`
`
`
`7
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`
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