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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`BLACKBERRY CORP.,
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`Petitioner,
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`v.
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`MAZ ENCRYPTION TECHNOLOGIES LLC,
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`Patent Owner.
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`____________
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`Case IPR2019-00624
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`U.S. Patent No. 7,096,358
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`____________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
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`Joint Motion to Terminate Proceeding
`Case IPR2019-00624
`U.S. Patent No. 7,096,358
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`Pursuant to 35 U.S.C. § 317(a) and authorization of the Board granted on
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`April 8, 2019, Petitioner BlackBerry Corp. (“BlackBerry”) and Patent Owner MAZ
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`Encryption Technologies LLC, (“MAZ”) jointly request termination of IPR2019-
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`00624, which is directed to U.S. Patent No.7,096,358 (“the ’358 Patent”).
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`This inter partes review was filed January 25, 2019. A Preliminary
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`Response has not been filed by the Patent Owner and no decision regarding
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`institution of the proceeding has issued. Further, no final written decision on the
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`merits of this review proceeding has been entered. The parties have settled their
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`dispute, and have reached agreement to terminate this inter partes review. As there
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`are no other petitioners in this proceeding, and the proceeding is still at a very early
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`stage, the parties respectfully submit that termination of this proceeding is
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`appropriate.
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`The parties’ Settlement Agreement has been made in writing, and a true
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`copy of same is attached hereto as Exhibit 1033.1 The parties further jointly certify
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`that there is no other agreement or understanding between them, including any
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`other collateral agreements, made in connection with, or in contemplation of, the
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`termination of the instant proceeding as set forth in 35 U.S.C. § 317(b). The parties
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`1 The Settlement Agreement is being filed electronically via the Patent Trial and
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`Appeals Board’s E2E as “Parties and Board Only.”
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`desire that the Settlement Agreement be maintained as business confidential
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`Joint Motion to Terminate Proceeding
`Case IPR2019-00624
`U.S. Patent No. 7,096,358
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`information under 37 C.F.R. § 42.74(c) and a separate joint request to that effect is
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`being filed concurrently.
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`As stated in 35 U.S.C. § 317(a), because Petitioner and Patent Owner jointly
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`request this termination as to Petitioner, no estoppel under 35 U.S.C. § 315(e) shall
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`attach to Petitioner.
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`I. Reasons Why Termination is Appropriate
`Termination with respect to Petitioner is proper under 35 U.S.C. § 317(a)
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`because the parties are jointly requesting termination and the Office has not yet
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`“decided on the merits of the proceeding before the request for termination is
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`filed.” Here, no decision on the merits has been made. Accordingly, the parties
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`are entitled to terminate this proceeding as to Petitioner under Section 317(a) upon
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`their joint request.
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`The parties respectfully submit that termination of this proceeding is
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`appropriate because (a) this proceeding is at a very early stage and no motions are
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`outstanding; (b) the parties have reached agreement to end their dispute concerning
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`the ‘358 Patent; (c) the parties have agreed to dismiss the related district court
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`litigation with respect to the ‘358 Patent; (d) the parties agree that this Inter Partes
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`Review should be terminated; and (e) termination of this proceeding will preserve
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`Joint Motion to Terminate Proceeding
`Case IPR2019-00624
`U.S. Patent No. 7,096,358
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`the Board’s resources and obviate the need for any more Board involvement in this
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`matter.
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`II. Related District Court Litigation and Status
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`The ‘358 patent was asserted in MAZ Encryption Technologies LLC v.
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`BlackBerry Limited et al. (Civil Action No. 3:17-cv-03267-K) (Northern District
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`of Texas). This litigation proceeding has been dismissed as part of the parties’
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`Settlement Agreement. There are no other current litigation proceedings
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`involving the subject patent.
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`III. Related Proceedings Before the Office
`No other proceedings related to the ‘358 Patent are pending.
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`Dated: April 9, 2019
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`
`
`/Neal Massand/
`Neal Massand (Reg. No. 54,296)
`Ni, Wang & Massand, PLLC
`8140 Walnut Hill Lane, Suite 500
`Dallas, Texas 75231
`(972) 331-4601
`nmassand@nilawfirm.com
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`Counsel for Patent Owner
`MAZ Encryption Technologies, LLC
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`Respectfully submitted,
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`
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`
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`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
`OBLON, MCCLELLAND, MAIER &
`NEUSTADT, LLP
`1940 Duke Street
`Alexandria, Virginia 22314
`(703) 412-6466
`cpdocketmattson@oblon.com
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`Counsel for Petitioner
` BlackBerry Corp
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of JOINT
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`MOTION TO TERMINATE PROCEEDING on the counsel of record for the
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`Patent Owner by filing this document through the PTABE2E System as well as
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`delivering a copy via electronic mail to the following address:
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`Neal Massand
`nmassand@nilawfirm.com
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`Nao Ni
`hni@nilawfirm.com
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`Ni, Wang & Massand, PLLC
`8140 Walnut Hill Ln., Ste. 500
`Dallas, TX 75231
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`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
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`Dated: April 9, 2019
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