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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SPEAKWARE, INC.,
`Patent Owner.
`
`__________________
`
`Case No. IPR2019-00874
`Patent 6,397,186
`__________________
`
`
`
`AMENDED JOINT MOTION TO DISMISS AND TERMINATE
`PROCEEDINGS
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`
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`
`
`Case No. IPR2019-00874
`
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.74, the authorization
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`provided by the Board in an email dated July 18, 2019, and the additional guidance
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`provided by the Board Petitioner Apple, Inc. and Patent Owner SpeakWare, Inc.
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`file this amended joint motion and jointly request dismissal and termination of this
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`proceeding.
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`Petitioner and Patent Owner have settled their dispute regarding the ’186
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`Patent, including both this proceeding and Patent Owner's assertion of the ’186
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`Patent in the related district court litigation, SpeakWare, Inc. v. Microsoft Corp., et
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`al., No. 8-18-cv-01293). A true and correct copy of the Parties’ agreement has
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`been filed as Exhibit 2001, along with a joint motion to treat the agreement as
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`business confidential information and be kept separate from the files of this
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`proceeding, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`Petitioner and Patent Owner certify that there are no collateral agreements or
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`understandings between the parties and made in connection with, or in
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`contemplation of, the termination of this proceeding.
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`STATUS OF RELATED PROCEEDINGS
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`In addition to this proceeding, there are several IPR proceedings involving
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`the ’186 Patent. There was also a recently concluded district court proceeding
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`involving the ’186 Patent. The status of these proceedings is indicated here:
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`1
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`
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`Case No. IPR2019-00874
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`1.
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`SpeakWare, Inc. v. Microsoft Corporation, et al., Case No. 8:18-cv-
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`01293 (C.D. Cal): In this consolidated district court action, SpeakWare asserted
`
`the ’186 patent against Apple Inc., Microsoft Corp., Samsung Electronics Co.,
`
`LTD, Samsung Electronics America, Inc., Amazon.com, Inc., and Google LLC.
`
`SpeakWare has settled its claim against each of these Defendants. And each of
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`SpeakWare’s claims has been dismissed with prejudice.
`
`2.
`
`Apple, Inc. v. SpeakWare, Inc., IPR2019-00875: As stated above,
`
`SpeakWare has settled its dispute with Apple. A joint motion to terminate
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`IPR2019-00875 has already been filed, and an amended joint motion is being filed
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`on the same day as this joint motion to terminate.
`
`3. Microsoft Corp. v. SpeakWare, Inc., IPR2019-00758 and IPR2019-
`
`00792: As stated above, SpeakWare has settled its dispute with Microsoft. Upon
`
`authorization from the Board, the parties will be filing joint motions to terminate
`
`these proceedings.
`
`4.
`
`Samsung Electronics Co., LTD, Samsung Electronics America, Inc. v.
`
`SpeakWare, Inc., IPR2019-01146 and IPR2019-01147: As stated above,
`
`SpeakWare has settled its dispute with the Samsung entities. The parties have filed
`
`joint motions to terminate these proceedings.
`
`2
`
`
`
`Case No. IPR2019-00874
`
`
`5.
`
`Amazon.com, Inc. v. SpeakWare, Inc., IPR2019-00999: As stated
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`above, SpeakWare has settled its dispute with Amazon. The parties have filed a
`
`joint motion to terminate this proceeding.
`
`6.
`
`Google LLC v. SpeakWare, Inc., IPR2019-00340 and IPR2019-00342:
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`As stated above, SpeakWare has settled its dispute with Google. The parties have
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`filed joint motions to terminate these proceedings.
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`7.
`
`Unified Patents Inc. v. SpeakWare, Inc., IPR2019-00495: Unified
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`Patents Inc. filed its petition on December 27, 2018. The Board entered a Decision
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`instituting Inter Partes Review on July 1, 2019. Oral Argument is scheduled for
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`April 1, 2020.
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`RELIEF REQUESTED
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`Petitioner and Patent Owner jointly request that the Board terminate this
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`proceeding in its entirety. Termination is appropriate at this stage in view of the
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`agreement (Ex. 2001) between the parties. The agreement (Ex. 2001) ends all
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`disputes between the parties, including this proceeding.
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`Both Congress and the 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, 450
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`U.S. 346, 352 (1981) (“The purpose of [Federal Rule of Civil Procedure] 68 is to
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`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575,
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`3
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`
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`Case No. IPR2019-00874
`
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`1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479
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`U.S. 950 (1986). The U.S. Court of Appeals for the Federal Circuit also places a
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`particularly strong emphasis on settlement. See Cheyenne River Sioux Tribe v.
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`U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to
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`reduce antagonism and hostility between parties). Moreover, the Board generally
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`expects that a proceeding “will terminate after the filing of a settlement agreement,
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`unless the Board has already decided the merits.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012); see 37 C.F.R. § 42.72.
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`Maintaining this proceeding after Petitioner’s settlement with Patent Owner
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`would discourage future settlements by removing a primary motivation for
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`settlement: eliminating litigation risk by resolving the parties’ disputes and ending
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`the pending proceedings between them. For patent owners, litigation risks include
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`the potential for an invalidity ruling against their patents. If a patent owner knows
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`that an inter partes review or covered business method review will likely continue
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`regardless of settlement, it creates a strong disincentive for the patent owner to
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`settle.
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`CONCLUSION
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`For the foregoing reasons, Petitioner and Patent Owner jointly request that
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`the Board terminate this proceeding in its entirety.
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`
`
`4
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`
`
`
`
`Date: August 16, 2019
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`
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`
`
`Date: August 16, 2019
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`
`
`
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`Case No. IPR2019-00874
`
`
`By:
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`By:
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`Respectfully submitted,
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`
`
`/s/ Sean A. Luner
`Sean A. Luner
`Registration No. 36,588
`Counsel for Patent Owner
`
`
`
`/s/ Jennifer C. Bailey
`Jennifer C. Bailey
`Registration No. 52,583
`
`Counsel for Petitioner
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`5
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`
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`Case No. IPR2019-00874
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`CERTIFICATE OF FILING AND SERVICE
`I hereby certify that a true and correct copy of the foregoing AMENDED
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`JOINT MOTION TO TERMINATE PROCEEDINGS is being filed via PTAB
`
`E2E and served by electronic mail this 2nd day of August, 2019 on counsel for
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`Petitioner as follows:
`
`Adam P. Seitz
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Adam.Seitz@eriseip.com
`
`Jennifer C. Bailey
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Jennifer.Bailey@eriseip.com
`
`Paul R. Hart
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Ste. 200
`Greenwood Village, Colorado 80111
`Paul.Hart@eriseip.com
`
`
`
`
`
`
`
`
`
`/s/ Sean A. Luner
`Sean A. Luner
`Registration No. 36,588
`sean@dovel.com
`DOVEL & LUNER, LLP
`Santa Monica, CA 90401
`Telephone: (310) 656-7066
`Facsimile: (310) 656-7069
`
`
`Counsel for Patent Owner
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`Date: August 16, 2019
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