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`Joint Motion to Terminate
`Case No. IPR2019-00711/US Patent No. 8,800,424
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` Paper 10
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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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`
`Armaspec, Inc.,
`Petitioner,
`
`v.
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`J & K IP Assets, LLC,
`Patent Owner
`
`
`Case IPR2019-00711
`U.S. Patent No. 8,800,424
`
`
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`Joint Motion to Terminate
`Case No. IPR2019-00711/US Patent No. 8,800,424
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Patent Owner J & K IP
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`
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`Assets, LLC (“Patent Owner”) and Petitioner Armaspec, Inc. (“Petitioner”)
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`(collectively, the “Parties”) jointly request termination of the inter partes review of
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`U.S. Patent No. 8,800,424 (“the ’424 patent”), Case No. IPR2019-00711.
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`II. Why Termination Is Warranted
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`Under 37 C.F.R. §§ 42.74 and 42.72, the Board may terminate a trial without
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`rendering a final written decision, where appropriate, including pursuant to a joint
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`request under 35 U.S.C. §§ 317(a) or 327(a). Termination is proper in this IPR
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`because the review is still in its early stages, the Office has not “decided the merits
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`of the proceeding before the request for termination is filed,” and the Parties are
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`jointly requesting termination after settling their dispute and agreeing to end
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`litigation relating to the ’424 patent.
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`First, the Board issued an institution decision on August 20, 2019 (Paper 7),
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`but the Parties have not completed their submissions of briefs or supporting evidence
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`(for example, a Patent Owner’s Response has not yet been filed). Oral Argument is
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`not scheduled to occur until May 27, 2020.
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`Second, the Office has not yet “decided the merits of the proceeding.” 35
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`U.S.C. § 317(a).
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`Third, the Parties also settled their dispute and agreed to termination of this
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`IPR proceeding. The Parties executed a binding, confidential Settlement Agreement
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`1
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`Joint Motion to Terminate
`Case No. IPR2019-00711/US Patent No. 8,800,424
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`effective Nov. 16, 2019. A true and correct copy of the Settlement Agreement is
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`submitted concurrently herewith as Confidential Exhibit 2006 (also submitted
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`concurrently herewith is a Joint Request to File the Settlement Agreement as
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`Business Confidential Information, be kept separate from the file of this proceeding
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`and the involved patent, and be made available only to Federal Government agencies
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`on written request or to persons showing good cause pursuant to 35 U.S.C. § 317(b)
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`and 37 C.F.R. § 42.74(c)). As part of the Settlement Agreement, Petitioner and
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`Patent Owner agreed to terminate this proceeding. Both Petitioner and Patent Owner
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`support termination. The ’424 patent is also the subject of one district court action
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`in the Northern District of California, captioned J & K IP Assets, LLC v. Armaspec,
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`Inc., Case No. 3:17-cv-07308-WHO (N.D. Cal.) (currently stayed), which the Parties
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`have similarly agreed to dismiss. The Parties have jointly requested dismissal of the
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`district court action and anticipate such an order within days. Termination of this
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`IPR proceeding would further promote efficiency and minimize unnecessary costs.
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`There are no other pending lawsuits or proceedings between the Petitioner and Patent
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`Owner relating to the ’424 patent.
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`As noted in the Patent Office Trial Practice Guidelines, “there are strong
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`public policy reasons to favor settlement between the parties to a proceeding . . . .
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`The Board expects that a proceeding will terminate after the filing of a settlement
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`2
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`Joint Motion to Terminate
`Case No. IPR2019-00711/US Patent No. 8,800,424
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`agreement, unless the Board has already decided the merits of the proceeding.”
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`77 Fed. Reg. 48768. For the reasons explained above, dismissal is appropriate here.
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`II. Conclusion
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`For the foregoing reasons, Petitioner and Patent Owner jointly request that
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`the Board dismiss this proceeding in its entirety.
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`Dated: December 3, 2019
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`Respectfully submitted,
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`/Thomas King/
`Thomas King
`Reg. No. 69,721
`Counsel for Patent Owner
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`/John D. van Loben Sels/
`John D. van Loben Sels
`Reg. No. 59,131
`Counsel for Petitioner
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`3
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`Joint Motion to Terminate
`Case No. IPR2019-00711/US Patent No. 8,800,424
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. §§ 42.105 and 42.6,
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`that service was made on the Petitioner as detailed below.
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`Date of service December 3, 2019
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`Manner of service Electronic Mail
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`Documents served Joint Motion to Terminate Proceeding Pursuant to 35 U.S.C.
`§ 317 and 37 C.F.R. § 42.74
`Confidential Exhibit 2006
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`Persons served John D. van Loben Sels (Reg. No. 59,131)
`Steven R. Castaneda (Reg. No. 67,167)
`Jennifer J. Shih (Reg. No. 68,675)
`FISH IP LAW LLP
`2603 Main Street, Suite 1000
`Irvine, CA 92614
`jvanlobensels@fishiplaw.com
`scastaneda@fishiplaw.com
`jshih@fishiplaw.com
`rmarfatia@fishiplaw.com
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`
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`Date: December 3, 2019
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`Respectfully submitted
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`/s/ Thomas King
`Thomas King
`Reg. No. 69,721
` Counsel for Patent Owner
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`4
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