IPR2020-00235
`Joint Motion to Terminate
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`APPLE INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`____________________________
`Case No. IPR2020-00235
`Patent No. 10,091,734
`____________________________
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`Joint Motion to Terminate
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`APPLE INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`____________________________
`Case No. IPR2020-00235
`Patent No. 10,091,734
`____________________________
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
`
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`IPR2020-00235
`Joint Motion to Terminate
`
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`EXHIBIT LIST
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`2001 Reserved
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`2002
`
`2003
`
`2004
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Order on
`Amended Docket Control (Mar. 27, 2020) [Amended Docket Control
`Order].
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Apple
`Inc.’s Notice Regarding Prior Art Reduction (Apr. 21, 2020) [Prior Art
`Reduction].
`
`Inter Partes Review Proceedings: A Fifth Anniversary Report, Perkins
`Coie LLP (Oct. 2017), https://www.perkinscoie.com/en/news-
`insights/inter-partes-review-proceedings-a-fifth-anniversary-report.html
`[2017 Report on Inter Partes Review Proceedings].
`
`2005 Michelle Umberger & Lisa Koop, District Court Stays: a Review of the
`Past 12 Months, ManagingIP.com,
`https://www.perkinscoie.com/images/content/1/6/v2/166020/Managing-
`IP-PC-Feature.pdf [District Court Stays].
`
`2006
`
`2007
`
`2008
`
`Intellectual Ventures I LLC v. T Mobile USA, Inc., 2:17-CV-00577-JRG,
`Dkt. 255 (E.D. Tex. Dec. 13, 2018) [T-Mobile Case].
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Order
`Focusing Patent Claims and Prior Art (Jul. 31, 2019) [Order Focusing
`Patent Claims].
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Seven’s
`Notice Regarding Claim Reduction (Apr. 7, 2020) [Seven’s Notice
`Regarding Claim Reduction].
`
`2009
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Complaint
`(Apr. 10, 2019) [Complaint].
`
`2010 Reserved
`
`
`
`i
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`
`
`IPR2020-00235
`Joint Motion to Terminate
`
`
`2011 RE: SEVEN v. Apple Motion to Amend DCO (Mar. 19, 2020) [Email
`from Apple’s counsel].
`
`2012 Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Claim
`Construction Memorandum and Order (Mar. 31, 2020) [Markman Order].
`
`2013-
`2019
`
`2020
`
`Reserved
`
`Innovation and Awards, SEVEN Networks,
`https://www.seven.com/about_us.innovation_awards.php (last visited
`Jun. 17, 2020)
`
`2021 Madeline Holcombe, Fauci says second wave is ‘not inevitable’ as
`coronavirus cases climb in some states, CNN HEALTH (Jun. 13, 2020,
`10:15) https://www.cnn.com/2020/06/13/health/us-coronavirus-
`saturday/index.html [6/13 Article]
`
`2022-
`2099 Reserved
`
`2100 Confidential Settlement Agreement
`
`
`
`
`
`
`
`ii
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`
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, the parties to this
`
`IPR2020-00235
`Joint Motion to Terminate
`
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`case, Petitioner Apple Inc. (“Apple” or “Petitioner”) and Patent Owner SEVEN
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`Networks, LLC (“SEVEN” or “Patent Owner”) (collectively “the Parties”), jointly
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`request termination of inter partes review (“IPR”) of the following sixteen pending
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`cases between the Parties. For the Board’s convenience, it is noted that a Joint
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`Motion substantially identical to this one is being filed today in each of the sixteen
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`cases.
`
`IPR2020-00188 (Patent 9,608,968)
`IPR2020-00157 (Patent 10,110,534)
`IPR2020-00491 (Patent 9,712,986)
`IPR2020-00285 (Patent 10,039,029)
`IPR2020-00235 (Patent 10,091,734)
`IPR2020-00266 (Patent 10,135,771)
`IPR2020-00280 (Patent 10,027,619)
`IPR2020-00584 (Patent 9,603,056)
`
`IPR2020-00156 (Patent 10,110,534)
`IPR2020-00490 (Patent 9,473,914)
`IPR2020-00236 (Patent 9,369,539)
`IPR2020-00255 (Patent 9,516,127)
`IPR2020-00180 (Patent 9,648,557)
`IPR2020-00279 (Patent 9,712,476)
`IPR2020-00506 (Patent 9,769,176)
`IPR2020-00707 (Patent 9,712,476)
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`The Parties have resolved their disputes, and pursuant to a Settlement and
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`License Agreement (“Settlement Agreement”) that resolves their disputes now
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`move to terminate this IPR. In accordance with 37 C.F.R. 42.20(b), the Parties
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`jointly sought authorization to file this motion, and received such authorization
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`from the Board on November 24, 2020.
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`Termination is proper for at least the following reasons:
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`
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`1
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`
`
`• The Board has not yet “decided the merits of the proceeding before the
`
`IPR2020-00235
`Joint Motion to Terminate
`
`
`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added); 77
`
`Fed. Reg. at 48,768 (“The Board expects that a proceeding will terminate
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`after the filing of a settlement agreement, unless the Board has already
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`decided the merits of the proceeding.”). At the time of this motion for
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`termination, the Board has not yet decided the merits of any of the
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`proceedings listed above. In thirteen of these cases (IPR2020-00490,
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`IPR2020-00491, IPR2020-00236, IPR2020-00285, IPR2020-00255,
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`IPR2020-00235, IPR2020-00180, IPR2020-00266, IPR2020-00279,
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`IPR2020-00280, IPR2020-00506, IPR2020-00584, IPR2020-00707), the
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`Patent Owner Response and any Motion To Amend are not yet due. In the
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`other three cases (IPR2020-00188, IPR2020-00156, IPR2020-00157), the
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`Petitioner’s Reply is not yet due. This supports the propriety of terminating
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`this proceeding. 77 Fed. Reg. 48,680, 48,686 (Aug. 14, 2012). And 35
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`U.S.C. § 317(a) provides that “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and the patent owner, unless the Office has decided
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`the merits of the proceeding before the request for termination is filed.”
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`2
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`
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`• The Parties are jointly requesting termination. 77 Fed. Reg. 48,756, 48,768
`
`IPR2020-00235
`Joint Motion to Terminate
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`(Aug. 14, 2012) (“There are strong public policy reasons to favor settlement
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`between the parties to a proceeding”).
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`• The pending related district court litigation between the Parties regarding the
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`Patent is SEVEN Networks, LLC v. Apple, Inc., No. 2:19-cv-00115 (E.D.
`
`Tex.) (“the Litigation”), as noted in both Parties’ Mandatory Notices.
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`Pursuant to the Settlement Agreement, the Parties have fully resolved their
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`dispute regarding the Patent. Based on the above, the Parties do not
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`anticipate any further litigation or proceedings between the Parties involving
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`the Patent.
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`• The Parties are unaware of any other pending related proceedings regarding
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`the Patent before the Board, or any other matter before the USPTO that
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`would be affected by the requested termination of this proceeding.
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`• Terminations, forgoing a Final Written Decision, have been granted even
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`where oral argument had already taken place before the Board. See Callidus
`
`Software Inc. v. Versata Software, Inc., et al., CBM2013-00052, Paper 50
`
`(Nov. 24, 2014) (terminating proceeding after Oral Argument); Clio USA,
`
`Inc. v. Procter and Gamble Co., IPR2013-00438, Paper 57 (Oct. 31, 2014)
`
`(same); Volusion, Inc. v. Versata Software, Inc., CBM2013-00017, Paper 53
`
`(June 17, 2014) and CBM2013-00018, Paper 52 (June 17, 2014) (same).
`3
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`
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`• Pursuant to the Settlement Agreement, the Parties are required to seek
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`IPR2020-00235
`Joint Motion to Terminate
`
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`authorization from the Board to file this Motion to Terminate, and have
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`received such authorization. Petitioner has also agreed not to voluntarily
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`participate in this or other IPR proceedings involving the Patent.
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`The Settlement Agreement, Exhibit 2100, has been made in writing, and a
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`true and correct copy shall be filed with this Office as business confidential
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`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)-(c). The
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`Parties certify that there are no collateral agreements or understandings made in
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`connection with, or in contemplation of, the termination of this inter partes review.
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`For the foregoing reasons, the Parties jointly and respectfully request that the
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`Board terminate the instant proceeding.
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`4
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`Date: December 2, 2020
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`Date: December 2, 2020
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`IPR2020-00235
`Joint Motion to Terminate
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`
`
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`Respectfully submitted,
`
` /W. Karl Renner/
`W. Karl Renner (Reg. No. 41,265)
`FISH & RICHARDSON P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-626-5070
`renner@fr.com
`
`Lead Counsel For Petitioner
`
`
` /Kenneth J. Weatherwax/
`Kenneth J. Weatherwax (Reg. No. 54,528)
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`Telephone: +1 310-307-4500
`weatherwax@lowensteinweatherwax.com
`
`Lead Counsel for Patent Owner
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`5
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`IPR2020-00235
`Joint Motion to Terminate
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the following document(s)
`
`was served on the date signed below:
`
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
`EXHIBIT 2100
`The names and addresses of the parties being served are as follows:
`
`W. Karl Renner
`Jeremy Monaldo
`Craig A. Deutsch
`
`
`
`
`IPR39521-0084IP1@fr.com
`monaldo@fr.com
`deutsch@fr.com
`axfptab@fr.com
`PTABInbound@fr.com
`
`Respectfully submitted,
`
` / Patrick Maloney /
`
`Date: December 2, 2020
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