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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JUNIPER NETWORKS, INC.
`Petitioner
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`v.
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`IMPLICIT, LLC
`Patent Owner
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`Case: IPR2020-00587
`Patent No. 9,591,104
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`PETITIONER AND PATENT OWNER’S JOINT MOTION TO
`TERMINATE INTER PARTES REVIEW PROCEEDINGS
`PURSUANT TO SECTION 317(A)
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`Pursuant to the Board’s authorization on January 6, 2021, Petitioner Juniper
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`Networks, Inc. and Patent Owner Implicit, LLC (collectively, “the Parties”) hereby
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`jointly request termination of the following Inter Partes Review proceedings
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`pursuant to the settlement between the Parties:
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`Juniper Networks, Inc. v. Implicit, LLC, Case IPR2020-00585;
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`Juniper Networks, Inc. v. Implicit, LLC, Case IPR2020-00586;
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`Juniper Networks, Inc. v. Implicit, LLC, Case IPR2020-00587;
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`Juniper Networks, Inc. v. Implicit, LLC, Case IPR2020-00590;
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`Juniper Networks, Inc. v. Implicit, LLC, Case IPR2020-00591; and
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`Juniper Networks, Inc. v. Implicit, LLC, Case IPR2020-00592.
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`This motion has been filed under separate caption in each proceeding.
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`I.
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`TERMINATION OF REVIEW IS APPROPRIATE
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`The Parties jointly request termination of these Inter Partes Review
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`proceedings pursuant to the settlement between the Parties. Section 317(a)
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`authorizes, upon settlement, termination of proceedings with respect to a petitioner
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`unless the Patent Office has “decided the merits of the proceeding before the request
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`for termination is filed.” 35 U.S.C. § 317(a); see also 37 C.F.R. § 42.72 (“The Board
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`may terminate a trial without rendering a final written decision, where appropriate,
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`including . . . pursuant to a joint request under 35 U.S.C. 317(a)”).
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`1
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`The parties settled their disputes regarding the Implicit Patents1 in principle
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`in October, 2020 and filed the stipulation of dismissal on January 4, 2021 in the
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`parallel litigation. See Docket No. 54, Stipulation of Dismissal, Implicit, LLC v.
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`Juniper Networks, Inc., No. 2:19-CV-00037-JRG-RSP (E.D. Tex. Jan. 4, 2021);
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`Paper 21 (Patent Owner’s Response). On January 15, 2021, the parallel litigation
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`was dismissed. See Docket No. 55, Order, Implicit, LLC v. Juniper Networks, Inc.,
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`No. 2:19-CV-00037-JRG-RSP (E.D. Tex. Jan. 15, 2021). The Parties’ written
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`agreement is submitted with this Joint Motion.
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`The Parties submit that termination is appropriate because briefing in these
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`proceedings has not been completed and the Board here has not issued a final written
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`decision. Under the schedule, the Reply briefs are due on January 25, 2021, and the
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`Sur-Reply briefs are due on March 8, 2021. Paper 17, at 8. The oral hearings (if
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`requested) are scheduled for May 17, 2021. Id. The one-year deadline under Section
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`316 to issue Final Written Decisions is August 10, 2021. See id. Board decisions
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`instruct that termination of proceedings is appropriate because the Board has not
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`issued a final written decision at this stage. See, e.g., Kokusa Electric Corp. v. ASM
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`IP Holding B.V., IPR2018-01151 (Paper 38), at 3–4 (P.T.A.B. Aug. 20, 2019)
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`(finding that a decision on merits had not been reached where, even though briefing
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`1 The Implicit Patents here are U.S. Patent Nos. 8,694,683 (“the ’683 Patent”);
`9,270,790 (“the ’790 Patent”); 9,591,104 (“the ’104 Patent”); 10,027,780 (“the ’780
`Patent”); 10,033,839; (“the ’839 Patent”) and 10,225,378 (“the ’378 Patent”).
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`2
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`had completed and the hearing was a week away) (informative).
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`The Parties request termination of the review of the Implicit Patents. Given
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`the early stages of this proceeding, the Parties submit it is appropriate to terminate
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`review under Section 317(a) and not proceed to a final written decision. Other than
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`the above-identified IPRs, the Parties are aware of no related proceedings pending
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`before the Office.
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`II. AGREEMENT SUBMITTED TO THE BOARD
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`Pursuant to the Board’s January 6, 2021 authorization, the Parties submit a
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`true and correct copy of the written settlement agreement in connection with this
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`matter as an Exhibit to this Motion under 37 C.F.R. § 42.74(b). Pursuant to the
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`Board’s authorization, the Parties request that the agreement be treated as business
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`confidential information and be kept separate from the files of the Implicit Patents,
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`pursuant to 37 C.F.R. 42.74(c). The Parties certify that there are no other agreements
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`or understandings between Petitioner and Patent Owner made in connection with, or
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`in contemplation of, the termination of the above-identified IPRs.
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`III. CONCLUSION
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`For the reasons stated above, the Parties respectfully request that the Board
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`terminate Inter Partes Review proceedings IPR2020-00585; IPR2020-00586;
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`IPR2020-00587; IPR2020-00590; IPR2020-00591; and IPR2020-00592.
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`3
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`Dated: January 15, 2021
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`Respectfully submitted,
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`DAVIS FIRM, PC
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`By:/s/ Christian J. Hurt
`Christian J. Hurt
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`By:/s/ Jonathan M. Lindsay
`Jonathan M. Lindsay (Reg. No. 45,810)
`David McPhie (Reg. No. 56,412)
`Dennis Courtney (Admitted Pro Hac Vice)
`IRELL &MANELLA LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Attorneys for Petitioner
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`4
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 15, 2021, a true copy of the following
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`document(s):
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`PETITIONER AND PATENT OWNER’S JOINT MOTION TO
`TERMINATE INTER PARTES REVIEW PROCEEDINGS
`PURSUANT TO SECTION 317(A)
`was served via electronic mail to the address and parties as follows:
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`Juniper-Implicit@irell.com
`Jonathan M. Lindsay
`David McPhie
`Courtney Dennis
`Irell & Manella LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
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`I declare under penalty of perjury under the laws of the United States of
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`America that the foregoing is true and correct. Executed on January 15, 2021 at
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`Dallas, Texas.
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`/s/Christian J. Hurt
`Christian J. Hurt
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`5
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