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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`COMMUNICATIONS TEST DESIGN, INC.,
`Petitioner,
`
`v.
`
`CONTEC, LLC,
`Patent Owner.
`
`___________________
`
`Inter Partes Review No.: IPR2019-01670
`
`U.S. Patent No. 8,209,732
`___________________
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`
`
`TABLE OF CONTENTS
`STATEMENT OF RELIEF REQUESTED .................................................... 1
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`IPR2019-01670
`U.S. Patent No. 8,209,732
`
`
`I.
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`II.
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`STATEMENT OF FACTS .............................................................................. 1
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`III. ARGUMENT ................................................................................................... 2
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`A.
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`The Board Should Terminate This Inter Partes Review In Its
`
`Entirety .................................................................................................. 3
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`B. Written Settlement Agreement .............................................................. 5
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`IV. CONCLUSION ................................................................................................ 6
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`- i -
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`IPR2019-01670
`U.S. Patent No. 8,209,732
`
`I. STATEMENT OF RELIEF REQUESTED
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`
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`Petitioner Communications Test Design, Inc. (“CTDI”) and Patent Owner
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`Contec, LLC (“Contec”) have entered into a Confidential Settlement Agreement that
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`resolves all underlying disputes between CTDI and Contec with respect to U.S.
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`Patent No. 8,209,732 (“the ’732 patent”). The parties are concurrently filing a
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`separate request that the Confidential Settlement Agreement (Ex. 1011) being filed
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`herewith be treated as business confidential information and be kept separate from
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`the files of the involved patent, pursuant to 37 C.F.R. § 42.74(c).
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`Accordingly, pursuant to 35 U.S.C. § 317, the parties jointly move the Board
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`to terminate this inter partes review proceeding in its entirety. The Board authorized
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`the parties to file this joint Motion to terminate in an email on May 1, 2020.
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`II. STATEMENT OF FACTS
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`On April 7, 2020, CTDI and Contec entered into a Confidential Settlement
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`Agreement. See Ex. 1011 (Confidential). Under the terms of the Confidential
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`Settlement Agreement, CTDI and Contec agreed to jointly seek termination of the
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`two pending PTAB proceedings where CTDI and Contec are the adverse parties,
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`IPR2019-01669 and IPR2019-01670. Both of these inter partes review proceedings
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`were instituted on March 26, 2020, but neither has reached Due Date 1. See
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`IPR2019-01669, Paper 10; IPR2019-01670, Paper 10.
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`- 1 -
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`
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`IPR2019-01670
`U.S. Patent No. 8,209,732
`The ’732 patent is one of two patents being asserted by Contec in Contec, LLC
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`v. Communications Test Design, Inc., No. 1:18-cv-01172-LEK-DJS (N.D.N.Y.)
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`(“NDNY Action”). By stipulation of the parties pursuant to terms of the Confidential
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`Settlement Agreement, the court dismissed the NDNY Action with prejudice on
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`April 30, 2020. The ’732 patent is also one of two patents that were the subject of a
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`declaratory judgment action, Communications Test Design, Inc. v. Contec, LLC, No.
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`2:18-cv-4077 (E.D. Pa.) (“DJ Action”), which was dismissed on February 15, 2019.
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`On March 13, 2020, in Appeal No. 19-1672-GJP, the U.S. Court of Appeals for the
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`Federal Circuit affirmed the dismissal order in the DJ Action, where a motion for
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`sanctions filed by Contec remained pending. By stipulation of the parties pursuant
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`to terms of the Confidential Settlement Agreement, the court dismissed the DJ
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`Action in its entirety with prejudice on May 1, 2020. No other litigation or
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`proceeding between the parties involving the ’732 patent is contemplated.
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`III. ARGUMENT
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`Section 317(a) provides: “An inter partes review instituted under this chapter
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`shall be terminated with respect to any petitioner upon the joint request of the
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`petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” 35 U.S.C. § 317(a). It further
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`provides: “If no petitioner remains in the inter partes review, the Office may
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`terminate the review or proceed to a final written decision under section 318(a).” Id.
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`- 2 -
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`
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`IPR2019-01670
`U.S. Patent No. 8,209,732
`Similarly, 37 C.F.R. § 42.72 provides that “[t]he Board may terminate a trial without
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`rendering a final written decision, where appropriate, including where the trial is
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`consolidated with another proceeding or pursuant to a joint request under 35 U.S.C.
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`317(a).” Termination of the present inter partes review proceeding in its entirety is
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`in the interest of justice.
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`A. The Board Should Terminate This Inter Partes Review In
`Its Entirety
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`Public policy favors terminating the present inter partes review proceeding.
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`
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`The federal courts have expressed a strong interest in encouraging settlement in
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`litigation. See, e.g., Bergh v. Dept. of Trans., 794 F.2d 1575, 1577 (Fed. Cir. 1986)
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`(“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
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`Board’s Trial Practice Guide stresses that “[t]here are strong public policy reasons
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`to favor settlement between the parties to a proceeding.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Additionally, termination of the proceeding at this stage, in view of the
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`Confidential Settlement Agreement, is appropriate. The USPTO can conserve
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`significant administrative and judicial resources by terminating the proceeding now,
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`removing the need for the Board to review additional briefing by the parties, hold
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`oral argument, and render a final written decision. The Board has terminated entire
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`inter partes review proceedings based on joint motions to terminate, even after the
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`- 3 -
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`
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`IPR2019-01670
`U.S. Patent No. 8,209,732
`merits had been fully briefed and the matter was ready for oral argument. See Toyota
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`Motor Corp. v. Blitzsafe Tex. LLC, IPR2016-00421, Paper 28, at 2-3 (P.T.A.B. Feb.
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`21, 2017) (granting motion to terminate even after all substantive papers were filed,
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`“particularly in light of the fact that a final written decision is not due until more
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`than four months from now”); Plaid Techs., Inc. v. Yodlee, Inc., IPR2016-00273,
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`Paper 29, at 2 (P.T.A.B. Feb. 8, 2017) (granting motion to terminate because “[t]he
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`parties’ joint motions to terminate were filed prior to the oral hearings in these
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`cases”); Apex Med. Corp. v. Resmed Ltd., IPR2013-00512, Paper 39, at 2-3
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`(P.T.A.B. Sept. 12, 2014) (granting joint motion to terminate after the parties had
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`fully briefed the matter because the Board “has not yet decided the merits of this
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`proceeding, and the record is not yet closed.”); Lam Research Corp. v. Flamm,
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`IPR2015-01764, Paper 27, at 5 (P.T.A.B. Dec. 15, 2016) (granting motion to
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`terminate after all briefing and oral argument when statutory deadline for rendering
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`final written decision is within two months of motion).
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`Because this proceeding is still at a relatively early stage (i.e., before Due Date
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`1), the expected normal course is to terminate the proceeding upon settlement. Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“The
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`Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding.”).
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`- 4 -
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`IPR2019-01670
`U.S. Patent No. 8,209,732
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`B. Written Settlement Agreement
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`The parties represent that their entire agreement in connection with the
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`termination of this proceeding has been made in writing and is embodied in Exhibit
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`1011 submitted herewith. There are no agreements or understandings, oral or
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`written, between the parties beyond those of Exhibit 1011 made in connection with,
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`or in contemplation of, the termination of this inter partes review. To avoid any
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`doubt, as requested by the Board in its May 1, 2020 email, the parties hereby certify
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`that they have complied with the requirements of 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(b).
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`Pursuant to 37 C.F.R. § 42.74(c), the parties are filing herewith as Exhibit
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`1011 a true copy of the complete Confidential Settlement Agreement. The
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`Confidential Settlement Agreement has been filed for access by the “Parties and
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`Board Only” due to the highly sensitive business confidential information they
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`contain. The parties desire that the Confidential Settlement Agreement be
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`maintained as business confidential information under 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c), and a separate joint request for such is being filed concurrently.
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`- 5 -
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`IPR2019-01670
`U.S. Patent No. 8,209,732
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`IV. CONCLUSION
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`CTDI and Contec respectfully request that the Board grant the parties’ Joint
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`Motion to Terminate this proceeding in its entirety.
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`Respectfully submitted,
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`/s/Richard W. Miller
`
`Richard W. Miller (Reg. No. 59,386)
`BALLARD SPAHR LLP
`Attorney for Petitioner
`Communications Test Design, Inc.
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`Respectfully submitted,
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`/s/Coby S. Nixon
`
`Coby S. Nixon (Reg. No. 56,424)
`TAYLOR ENGLISH DUMA LLP
`Attorney for Patent Owner
`Contec, LLC
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`Date: May 7, 2020
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`Date: May 7, 2020
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`- 6 -
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`IPR2019-01670
`U.S. Patent No. 8,209,732
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on
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`May 7, 2020, a true and correct copy of the foregoing JOINT MOTION TO
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`TERMINATE INTER PARTES REVIEW and EXHIBIT 1011 were served
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`electronically via e-mail in their entireties on the following parties:
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`Coby S. Nixon
`Seth K. Trimble
`TAYLOR ENGLISH DUMA LLP
`1600 Parkwood Circle, Suite 200
`Atlanta, GA 30339
`cnixon@taylorenglish.com
`strimble@taylorenglish.com
`Attorney for Patent Owner Contec, LLC
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`
`
`/s/ Richard W. Miller
`Richard W. Miller (Reg. No. 59,386)
`
`Attorney for Petitioner
`Communications Test Design, Inc.
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`Date: May 7, 2020
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