`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`VMWARE, INC.,
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner
`
`___________________
`
`Case IPR2020-00470
`Patent 7,949,752
`___________________
`
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`Description
`Joint Claim Construction Statement, Intellectual Ventures I, LLC
`et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court for
`the Western District of Texas, April 17, 2020.
`
`Defendant’s Preliminary Invalidity Contentions, Intellectual
`Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S.
`District Court for the Western District of Texas, January 15,
`2020.
`
`Order Resetting Markman Hearing, Intellectual Ventures I, LLC
`et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court for
`the Western District of Texas, April 16, 2020.
`
`Exhibit C-1: Invalidity Chart for U.S. Patent No. 7,949,752,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, filed
`July 31, 2019.
`
`Preliminary Claim Construction Rulings, Intellectual Ventures I,
`LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District
`Court for the Western District of Texas, May 14, 2020.
`
`Disputed Claim Terms, Intellectual Ventures I, LLC et. al. v.
`VMware, Inc., No. 1:19-cv-01075, U.S. District Court for the
`Western District of Texas, April 17, 2020
`
`Plaintiffs’ Claim Construction Brief, Intellectual Ventures I, LLC
`et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court for
`the Western District of Texas, March 6, 2020
`
`Defendant VMware, Inc.’s Opening Claim Construction Brief,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas,
`March 6, 2020
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`
`
`- i -
`
`
`
`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`
`Description
`Defendant VMware, Inc.’s Responsive Claim Construction Brief,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas,
`March 27, 2020.
`
`Plaintiffs’ Reply Claim Construction Brief, Intellectual Ventures
`I, LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District
`Court for the Western District of Texas, April 10, 2020.
`
`Defendant VMware Inc.’s Reply Claim Construction Brief,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas,
`April 10, 2020.
`
`Plaintiffs’ Supplemental Construction Brief, Intellectual Ventures
`I, LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District
`Court for the Western District of Texas, May 13, 2020.
`
`Defendant’s Supplemental Claim Construction Statement,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, May
`13, 2020.
`
`Intellectual Ventures’ Technology Tutorial of the ’752 patent,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas,
`April 24, 2020.
`
`Curriculum Vitae of Prashant Shenoy, PH.D.
`
`Declaration of Prashant Shenoy, PH.D. in Support of Patent
`Owner’s Response
`
`Nieva, Richard, “At Premiere of General Magic Doc, Tech Icons
`Consider the Future,” Cnet.com (July 27, 2018)
`
`U.S. Trademark Registration No. 4,425,780 (filed Dec. 15, 2007)
`
`Exhibit No.
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`
`
`- ii -
`
`
`
`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`
`Exhibit No.
`
`2019
`
`2020
`
`2021
`
`Description
`Remote Deposition Transcript of Darrell Long, Ph.d. (October 28,
`2020)
`Miloȷ́ičić et al., “Process Migration,” ACM Computing Surveys,
`Vol. 32, No. 3, 241-299 (September 2000)
`
`Settlement Agreement (CONFIDENTIAL)
`
`
`
`- iii -
`
`
`
`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`Pursuant to 37 C.F.R § 42.74 and the authorization provided by the Board
`
`email of January 21, 2021, Petitioner VMware Inc. (“Petitioner”) and Patent
`
`Owner Intellectual Ventures I LLC (“Patent Owner”) jointly request termination of
`
`this proceeding, IPR2020-00470, directed to U.S. Patent No. 7,949,752 (the “’752
`
`Patent”).
`
`I.
`
`CERTIFICATION
`
`Petitioner and Patent Owner submit a true copy of any agreement or
`
`understanding (Exhibit 2021) between Petitioner and Patent Owner made in
`
`connection with, or in contemplation of, the termination of the proceeding under
`
`37 CFR § 42.74(b) with this joint motion.
`
`II.
`
`STATUS OF RELATED PROCEEDINGS
`
`Petitioner and Patent Owner have resolved their disputes regarding the ’752
`
`Patent, including this proceeding and Patent Owner’s assertion of the ’752 Patent
`
`in the related district court litigation, 1-19-cv-01075. The parties do not anticipate
`
`further litigation between them concerning the ’752 Patent.
`
`III. RELIEF REQUESTED
`
`
`
`As authorized by the Board, the parties are jointly and contemporaneously
`
`filing: (i) this joint motion to terminate the proceeding; (ii) a true copy of any
`
`agreement or understanding (Exhibit 2021) between Petitioner and Patent Owner
`
`made in connection with, or in contemplation of, the requested termination; and
`
`
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`- 1 -
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`
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`(iii) a joint request to treat the agreements as business confidential information and
`
`keep the agreement (Exhibit 2021) separate from the file of the involved patent,
`
`pursuant to 37 C.F.R. § 42.74(c).
`
`Petitioner and Patent Owner jointly request that the Board terminate this
`
`proceeding in its entirety. Termination is appropriate at this stage and in view of a
`
`settlement between Petitioner and Patent Owner. An inter partes review shall be
`
`terminated with respect to any petitioner upon the joint request of the petitioner
`
`and the patent owner, unless the Office has decided the merits of the proceedings
`
`before the request for termination is filed. 35 U.S.C. § 317(a). Good cause exists to
`
`terminate this proceeding because (1) Petitioner and Patent Owner have resolved
`
`their disputes regarding the ’752 Patent; (2) this proceeding is still at an early stage
`
`because the Office has not yet decided the merits of the proceeding; and (3)
`
`terminating the proceeding now would thus serve the interests of judicial economy
`
`as well as the mutual interest of the parties.
`
`
`
`
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`
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`- 2 -
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`
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`
`Respectfully submitted,
`
` /
`
` Louis L. Campbell /
`
`
`Louis L. Campbell (Reg. No. 59,963)
`WINSTON & STRAWN LLP
`Counsel for Petitioner
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
` /
`
` Lestin Kenton /
`
`
`Lestin Kenton (Reg. No. 72,314)
`Counsel for Patent Owner
`
`- 3 -
`
`
`
`Date: January 22, 2021
`
`Date: January 22, 2021
`
`
`
`
`
`
`
`
`
`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
`LIMITATION, TYPEFACE REQUIREMENTS, AND TYPE STYLE
`REQUIREMENTS
`
`This paper complies with the page limitation of 15 pages excluding
`
`1.
`
`the parts exempted by 37 C.F.R. § 42.24.
`
`2.
`
`This paper complies with the general format requirements of 37
`
`C.F.R. § 42.6 and has been prepared using Microsoft® Word 2016 in 14 point
`
`Times New Roman.
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`
`
`
`
`
`
`/ Lestin Kenton /
`
`
`
`
`
`Lestin Kenton (Reg. No. 72,314)
`Counsel for Patent Owner
`
`Date: January 22, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`
`TERMINATE INTER PARTES REVIEW and Exhibit 2021 were served
`
`electronically via e-mail on January 22, 2021 in their entireties on the following
`
`counsel for Petitioner:
`
`Katherine A. Vidal (Lead Counsel) kvidal@winston.com
`Louis L. Campbell (Back-up Counsel) llcampbell@winston.com
`Michael A. Tomasulo (Back-up Counsel) mtomasulo@winston.com
`WINSTON & STRAWN LLP
`VMware-IV-PTAB@winston.com
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`
`
`
`Date: January 22, 2021
`
` /
`
` Lestin Kenton /
`
`
`Lestin Kenton (Reg. No. 72,314)
`Counsel for Patent Owner
`
`
`
`1100 New York Avenue, NW
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`
`
`
`
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