`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`ICONEX, LLC,
`Petitioner
`
`v.
`
`MAXStick Products Ltd.,
`Patent Owner
`
`___________________________________
`
`Case: IPR2019-01119
`U.S. Patent No. 8,445,104
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. § 42.7
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Iconex LLC
`
`(“Iconex”) and Patent Owner MAXStick Products Ltd. (“MAXStick”) jointly move
`
`to terminate this inter partes review proceeding in light of the parties’ settlement of
`
`their dispute regarding the challenged patent, U.S. Patent No. 8,445,104. The filing
`
`of this Joint Motion was authorized by the Board via email on May 18, 2020. The
`
`parties are filing concurrently with this motion, a true copy of their written
`
`settlement agreement in connection with this matter as required. 35 U.S.C. § 317
`
`and 37 C.F.R. § 42.74. The settlement effectively resolves all disputes between the
`
`parties regarding the challenged patent, and this entire proceeding should be
`
`dismissed as to both Petitioner and Patent Owner.
`
`II.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`On May 14, 2020, Petitioner and Patent Owner reached an agreement to
`
`resolve all present disputes and to avoid any additional disputes regarding the patent
`
`challenged in the above-captioned inter partes review. Accordingly, termination is
`
`appropriate because all disputes between the parties regarding U.S. Patent No.
`
`8,445,104 have been resolved.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), filed separately
`
`herewith as Exhibit 1033 is a true copy of the written Settlement Agreement
`
`resolving, inter alia, the dispute in the above-captioned inter partes review. The
`
`1
`
`
`
`parties also are filing separately herewith a request that the Settlement Agreement
`
`be treated as business confidential information and be kept separate from the files
`
`of this proceeding in accordance with 37 C.F.R. § 42.74(c). The parties also hereby
`
`certify that there are no collateral agreements or understanding made in connection
`
`with, or in contemplation of, the termination of this proceeding pursuant to 35
`
`U.S.C. § 317(b) and 37 C.F.R. §42.74(b).
`
`For at least these reasons, Petitioner and Patent Owner submit that
`
`termination of this inter partes review is appropriate.
`
`Dated: May 18, 2020
`
`
`
`Respectfully submitted,
`By: /s/ Matias Ferrario
`
`Matias Ferrario (Reg. No. 51,082)
`
`Lead Counsel for Petitioner
`
`Lead Counsel
`Matias Ferrario
`Reg. No. 51,082
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Telephone: 336-607-7475
`Fax: 336-607-7500
`Email:
`mferrario@kilpatricktownsend.com
`Backup Counsel
`
`Backup Counsel
`Andrew Rinehart
`Reg. No. 75,537
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Telephone: 336-607-7312
`Fax: 336-607-7500
`Email:
`arinehart@kilpatricktownsend.com
`
`2
`
`
`
`Courtney Dabbiere
`Reg. No. 74,185
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`Telephone: 404-815-6027
`Fax: 404-541-4757
`Email:
`cdabbiere@kilpatricktownsend.com
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing JOINT
`
`MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R.
`
`§ 42.7 has been served electronically via email upon the following:
`
`James R. Muldoon
`Harris Beach PLLC
`jmuldoon@harrisbeach.com
`
`Laura W. Smalley
`Harris Beach PLLC
`lsmalley@harrisbeach.com
`
`Dated: May 18, 2020
`
`
`
`By: /s/ Matias Ferrario
`
`Matias Ferrario (Reg. No. 51,082)
`
`Counsel for Petitioner
`
`4
`
`
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