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`Paper 7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`SYTE – VISUAL CONCEPTION LTD.,
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`Petitioner
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`v.
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`SLYCE ACQUISITION INC.,
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`Patent Owner.
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`U.S. Patent No. 9,152,624
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`________________
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`Inter Partes Review No. IPR2020-00881
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`______________________________________________________________
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`___
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`SYTE – VISUAL CONCEPTION LTD. AND SLYCE ACQUISITION
`INC.’S JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`IPR2020-00881
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`Paper 7
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F. R. § 42.74, Petitioner Syte
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`– Visual Conception Ltd. (“Syte”) and Patent Owner Slyce Acquisition Inc.
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`(“Slyce”) jointly request termination of Inter Partes Review of U.S. Patent
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`No. 9,152,624 (the “‘624 Patent”), Case No. IPR2020-00881.
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`The parties have reached a settlement agreement regarding the ‘624
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`Patent and have agreed to terminate this IPR2020-00881 as well as
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`IPR2020-00880. No other IPRs are known to be pending against the ‘624
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`Patent. In accordance with 37 C.F.R. § 42.00(b), the parties received
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`authorization from the Board, on October 8, 2020, to file this motion by
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`October 13, 2020.
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`Termination of this proceeding is proper for at least the following
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`reasons:
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`• The district court litigation, Slyce Acquisition Inc., v. Syte-Visual
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`Conception Ltd., et al., Case No. 6:19-CV-00257-ADA (W.D. Tex),
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`involving the ‘624 Patent, has been settled. No other cases involve
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`the ‘624 Patent, and the parties do not contemplate any litigation or
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`proceeding involving the ‘624 Patent in the foreseeable future.
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`• The parties are jointly requesting termination. 77 Fed. Reg. 48,756,
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`48,768 (Aug. 14, 2012) (“There are strong public policy reasons to
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`factor settlement between the parties to a proceeding.”).
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`IPR2020-00881
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`Paper 7
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`• The Board has not yet “decided the merits of the proceeding before
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`the request for termination is filed.” 35 U.S.C. § 317(a); 77 Fed. Reg.
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`48,768 (“The Board expects that a proceeding will terminate after the
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`filing of a settlement agreement, unless the Board has already decided
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`the merits of the proceeding.”). This proceeding is still in its early
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`stage and IPR2020-00881 has not been instituted.
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`This Settlement Agreement has been made in writing and a true and
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`correct copy will be filed with this request as Exhibit 1120. Concurrently
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`with this motion, the parties are submitting a joint request to treat the
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`agreement as business confidential information and be kept separate from
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`the files of the above captioned IPR pursuant to 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c). There are no collateral agreements or understandings
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`made in connection with, or in contemplation of, the termination of the
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`proceeding.
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`Therefore, Syte and Slyce respectfully request termination of Inter
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`Partes Review of U.S. Patent No. 9,152,624, Case No. IPR2020-00881.
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`IPR2020-00881
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`Paper 7
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`Date: October 8, 2020
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` Respectfully submitted,
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`/Guy Yonay/
`Guy Yonay
`Pearl Cohen Zedek Latzer Baratz LLP
`New York, NY 10036
` 1500 Broadway 12th floor
` Phone: (646) 878-0800
` Registration No. 52,388
` Lead Counsel for Petitioner
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`/s/ Christopher L. Drymalla
`chris.drymalla@bracewell.com
`Bracewell LLP
`111 Congress Avenue, Suite 2300
`Austin, Texas 78701-4061
`(512) 494-3621 (t)
`(800) 404-3970 (f)
`Registration No. 61,843
`Lead Counsel for Patent Owner
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`3
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