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`Joint Motion to Terminate, IPR2020-00598
`U.S. Patent 7,231,379
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Oracle Corp.,
`Petitioner,
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`v.
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`Guada Technologies LLC,
`Patent Owner.
`
`
`Case IPR2020-00598
`Patent No. 7,231,379
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`
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`JOINT MOTION TO TERMINATE
`INTER PARTES REVIEW OF U.S. PATENT 7,231,379
`UNDER 37 C.F.R. § 42.72
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`Joint Motion to Terminate, IPR2020-00598
`U.S. Patent 7,231,379
`Pursuant to 37 C.F.R. § 42.72, Petitioner Oracle Corp. and Patent
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`Owner Guada Technologies LLC jointly request dismissal and termination of the
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`petition for Inter Partes Review of U.S. Patent 7,231,379 in IPR2020-00598.
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`Petitioner and Patent Owner have entered into a written confidential settlement
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`agreement that fully resolves this matter. The parties are concurrently filing a copy
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`of the settlement agreement as Exhibit 2001 and the single collateral agreement as
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`Exhibit 2002 along with a request to treat it as confidential business information
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`pursuant to 35 U.S.C. § 317(b). The undersigned represent that there are no other
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`agreements, oral or written, between the parties made in connection with, or in
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`contemplation of, the termination of the present proceeding and that Exhibit 2001
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`represents a true and accurate copy of the agreement between the parties that
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`resolves the present proceeding, and that Exhibit 2002 is the only related collateral
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`agreement.
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`On May 22, 2020, the parties informed the Board of the settlement via
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`e-mail and requested authorization to file a joint motion to terminate the
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`petition with respect to both the Patent Owner and the Petitioner. As set forth
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`in an e-mail dated June 3, 2020, the Board authorized the filing of the
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`requested joint motion to terminate this petition. Accordingly, Petitioner and
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`Patent Owner jointly request termination of the present proceeding.
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`On June 10, 2020 (Paper 8), the Board directed the parties to re-file the
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`Joint Motion to Terminate, IPR2020-00598
`U.S. Patent 7,231,379
`Motions to include any “related collateral agreements”, and denied the Motions
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`without prejudice. The parties have now, upon the Board’s request, submitted all
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`related collateral agreements (see Exhibit 2002).
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`Public policy favors terminating the present petition for inter partes
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`review. Congress and federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August,
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`450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage
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`the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577
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`(Fed. Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S.
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`950 (1986). The Federal Circuit places a particularly strong emphasis on
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`settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed.
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`Cir. 1986) (noting that the law favors settlement to reduce antagonism and
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`hostility between parties). And, the Board’s Trial Practice Guide stresses that
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`“[t]here are strong public policy reasons to favor settlement between the
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`parties to a proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 46,768 (Aug. 14, 2012).
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`Ending this petition for IPR early promotes the Congressional goal of
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`establishing a more efficient patent system by limiting unnecessary and
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`counterproductive costs. See Changes to Implement Inter Partes Review
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`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
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`
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`Joint Motion to Terminate, IPR2020-00598
`U.S. Patent 7,231,379
`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
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`Permitting termination provides certainty and fosters an environment
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`that promotes settlements, creating a timely, cost-effective alternative to
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`litigation.
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`Additionally, termination of this petition for IPR is appropriate as the
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`Board has not yet “decided the merits of the proceeding.” See, e.g., Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
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`Petitioner filed its petition for inter partes review on February 19, 2020 and filed
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`Petitioner’s Motion For Joinder on February 20, 2020 seeking to join IPR 2020-
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`01304. The Board has not yet ruled on Petitioner’s Motion For Joinder. IPR 2020-
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`01304 was terminated on March 25, 2020.
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`The parties have now settled their dispute and have reached agreement to
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`terminate this proceeding. The USPTO can conserve its resources through
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`terminating now, removing the need for the Board to further consider the
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`arguments and to render a Final Written Decision.
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`There are no other pending USPTO proceedings regarding the patent-at-
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`issue. Therefore, the Parties respectfully request termination of this Inter
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`Partes Review of U.S. Patent 7,231,379 (IPR2020-00598).
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`Dated: July 1, 2020
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`Joint Motion to Terminate, IPR2020-00598
`U.S. Patent 7,231,379
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`/s/ Isaac Rabicoff________
`Isaac Rabicoff
`Reg. No. 74,147
`RABICOFF LAW LLC
`
`Lead Counsel for Patent Owner
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`
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`/s/ James M. Heintz
`James M. Heintz (Reg. No. 41,828)
`DLA Piper LLP
`11911 Freedom Dr., Suite 300, Reston VA 20190
`Telephone: 703-773-4000
`Fax: 703-773-5200
`Email: jim.heintz@dlapiper.com
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`
`Lead counsel for Petitioners
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`Joint Motion to Terminate, IPR2020-00598
`U.S. Patent 7,231,379
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on July 1,
`2020 the foregoing JOINT MOTION TO TERMINATE INTER PARTES
`REVIEW was served via electronic filing with the Board and via Electronic
`Mail on the following representative of record for Petitioner:
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`James M. Heintz (Reg. No. 41,828)
`DLA Piper LLP
`11911 Freedom Dr., Suite 300, Reston VA 20190
`Telephone: 703-773-4000
`Fax: 703-773-5200
`Email: jim.heintz@dlapiper.com
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`Alireza Babaei
`DLA Piper LLP
`11911 Freedom Dr., Suite 300, Reston VA 20190
`Telephone: 703-773-4000
`Fax: 703-773-5200
`Email: alireza.babaei@dlapiper.com
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`/s/ Isaac Rabicoff________
`Isaac Rabicoff
`Reg. No. 74,147
`RABICOFF LAW LLC
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`Lead Counsel for Patent Owner
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