`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`MEMORY TECHNOLOGIES, LLC,
`Patent Owner.
`
`______________________
`
`Case IPR2019-00648
`Patent No. 9,063,850 B2
`______________________
`
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
`
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization of September 5, 2019, Petitioner Kingston Technology Company,
`
`Inc. and Patent Owner Memory Technologies, LLC jointly move to terminate the
`
`present inter partes review proceeding with respect to Petitioner in light of Patent
`
`Owner’s and Petitioner’s settlement of their dispute regarding U.S. Patent No.
`
`9,063,850 (“the ’850 Patent”).
`
`Petitioner and Patent Owner are concurrently filing a true copy of their
`
`written Settlement Agreement (Confidential Exhibit 1021) in connection with this
`
`matter as required by the statute. Petitioner and Patent Owner certify that there are
`
`no other agreements or understandings, oral or written, between the parties,
`
`including any collateral agreements, made in connection with, or in contemplation
`
`of, the termination of the present proceeding with respect to Petitioner. A joint
`
`request to treat the Settlement Agreement as business confidential information kept
`
`separate from the file of the involved patent pursuant to 35 U.S.C. § 317(b) is
`
`being filed concurrently.
`
`LEGAL STANDARD
`
`An inter partes review proceeding “shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner, unless the
`
`Office has decided the merits of the proceeding before the request for termination
`
`1
`
`
`
`
`
`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
`
`
`is filed.” 35 U.S.C. § 317(a). A joint motion to terminate generally “must (1)
`
`include a brief explanation as to why termination is appropriate; (2) identify all
`
`parties in any related litigation involving the patents at issue; (3) identify any
`
`related proceedings currently before the Office, and (4) discuss specifically the
`
`current status of each such related litigation or proceeding with respect to each
`
`party to the litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc.,
`
`IPR2014-00018, Paper No. 26, at *2 (P.T.A.B. July 28, 2014).
`
`The Board has consistently granted a request to terminate a proceeding for
`
`both the petitioner and patent owner when the request is filed before briefing has
`
`completed, which is the case here, as the Institution Decision was just issued on
`
`September 5, 2019 (Paper 8). See, e.g., Itron, Inc. v. Certified Measurement, IPR
`
`2015-00570, Paper 28, at 2-3 (P.T.A.B. February 16, 2016) (terminating the
`
`proceedings for both Patent Owner and Petitioner while noting that since
`
`“Petitioner has not yet filed a Reply in any of the cases, … if we do not terminate
`
`these proceedings with respect to Patent Owner, … [the Board] will be required to
`
`determine patentability on less than a full record”); CB Distributors, Inc. and DR
`
`Distributors, LLC v. Fontem Holdings 1 B.V., IPR2014-01529, Paper 41, at 4
`
`(P.T.A.B. December 7, 2015) (terminating the proceedings for both Patent Owner
`
`and Petitioner where a reply to the Patent Owner Response had yet to be filed).
`
`2
`
`
`
`
`
`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
`
`
`
`ARGUMENT
`
`Termination of the present inter partes review proceeding is appropriate
`
`because (1) Petitioner and Patent Owner have resolved their dispute regarding the
`
`’850 Patent and have agreed to terminate this proceeding, (2) the Office has not yet
`
`decided the merits of the proceeding, and (3) public policy favors the termination.
`
`Although the Board has instituted trial (Paper 8), the Office has not decided
`
`the merits of the proceeding. Moreover, the current record is incomplete because
`
`briefing is still open. The Institution Decision was just issued on September 5,
`
`2019. (Paper 8.) This strongly favors termination. See, e.g., Itron, Inc., IPR 2015-
`
`00570, Paper 28, at 2-3; CB Distributors, IPR2014-01529, Paper 41, at 4.
`
`Public policy also favors the termination. As recognized by the rules of
`
`practice before the Board:
`
`There are strong public policy reasons to favor settlement
`between the parties to a proceeding. The Board will be
`available to facilitate settlement discussions, and where
`appropriate, may require a settlement discussion as part
`of the proceeding. The Board expects that a proceeding
`will terminate after the filing of a settlement agreement,
`unless the Board has already decided the merits of the
`proceeding.
`
`3
`
`
`
`
`
`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
`
`
`Patent Office Trial Practice Guide, Fed. Register, Vol. 77, No. 157 at 48768
`
`(Aug. 14, 2012). Moreover, no public interest or other factors militate against
`
`termination of this proceeding.
`
`As to the remaining Heartland Tanning requirements regarding the
`
`identification and status of related proceedings, Petitioner and Patent Owner
`
`represent that there are not any other proceedings before the Board on the ’850
`
`Patent. There is one related district court litigation, in which Petitioner and Patent
`
`Owner are both parties, Memory Technologies, LLC v. Kingston Technology
`
`Corporation et al., No. 8-18-cv-00171 (C.D. Cal. Jan. 31, 2018). The parties to
`
`this related litigation have filed a motion to dismiss the action in its entirety,
`
`including all claims regarding the ’850 Patent, which has been granted. As such,
`
`there are no parties that would obtain any benefit by the continuance of this
`
`proceeding.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner and Patent Owner jointly and
`
`respectfully request that the instant proceeding be terminated.
`
`4
`
`
`
`
`
`Date: September 6, 2019
`
`
`
`
`Dated: September 6, 2019
`
`
`
`By:
`
`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
`
`
`
`
`
`/Robert C.F. Pérez/
`By:
`Robert C.F. Pérez (Reg. No. 39,328)
`Lead Counsel
`Pillsbury Winthrop Shaw Pittman LLP
`1650 Tysons Boulevard, 14th Floor
`McLean, VA 22102
`Telephone: 703-770-7900
`Facsimile: 703-770-7901
`Email: robert.perez@pillsburylaw.com
`
`Christopher Kao
`Backup Counsel
`Brock S. Weber
`Backup Counsel
`Pillsbury Winthrop Shaw Pittman LLP
`4 Embarcadero Center, 22nd Floor
`San Francisco, CA 94111
`Telephone: 415-983-1000
`Facsimile: 415-983-1200
`Email: christopher.kao@pillsburylaw.com
`Email: brock.weber@pillsburylaw.com
`
`Counsel for Petitioner
`
`
`
`
`
`/Andrew Strickland/
`James D. Stein (Reg. No. 63,782)
`Lead Counsel
`Andrew Strickland (Reg. No. 67,755)
`Backup Counsel
`William B. Dyer III (Reg. No. 41,725)
`Backup Counsel
`Lee & Hayes P.C.
`1175 Peachtree Street NE
`100 Colony Square, Suite 2000
`Atlanta, GA 30361
`Phone: 404.736.1918
`james.stein@leehayes.com
`andrew.strickland@leehayes.com
`bill.dyer@leehayes.com
`
`Counsel for Patent Owner
`
`5
`
`
`
`
`
`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on September 6, 2019, a true and
`
`
`
`correct copy of the foregoing JOINT MOTION TO TERMINATE PURSUANT
`
`TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74 was served via electronic mail on the
`
`following counsel of record for Patent Owner:
`
`James D. Stein (Reg. No. 63,782)
`Lead Counsel
`Andrew Strickland (Reg. No. 67,755)
`Backup Counsel
`William B. Dyer III (Reg. No. 41,725)
`Backup Counsel
`Lee & Hayes P.C.
`1175 Peachtree Street NE
`100 Colony Square, Suite 2000
`Atlanta, GA 30361
`Phone: 404.736.1918
`james.stein@leehayes.com
`andrew.strickland@leehayes.com
`bill.dyer@leehayes.com
`
`
`
`
`
`By:
`
`
`
`6
`
`/Robert C.F. Pérez/
`Robert C.F. Pérez (Reg. No. 39,328)
`Lead Counsel
`
`Counsel for Petitioner
`
`
`
`
`
`4830-9044-2660
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
