`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SQUARE, INC.,
`Petitioner
`
`v.
`
`SENDSIG, LLC,
`Patent Owner
`
`Case No.: IPR2020-00930
`Patent No.: 6,564,249
`Filing Date: October 15, 2001
`Issue Date: May 13, 2003
`Title: Method and System for Creating and Sending Handwritten or Handdrawn
`Messages
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`
`
`In accordance with 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the
`
`Board’s authorization granted on November 24, 2020, Petitioner Square, Inc. and
`
`Patent Owner SendSig, LLC, jointly move to terminate this Inter Partes Review
`
`proceeding, No. IPR2020-00930, based on an agreement between the parties.
`
`On November 18, 2020, the parties agreed to resolve their disputes relating to
`
`United States Patent No. 6,564,249, to dismiss with prejudice the co-pending
`
`litigation (SendSig, LLC v. Square, Inc., No. 1:19-cv-03733-JPB) and request
`
`termination of this proceeding. The parties have executed a confidential agreement,
`
`and pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the written agreement
`
`is submitted concurrently herewith as Exhibit 1020.1 The parties jointly request
`
`under 37 C.F.R. § 42.74(c) that the agreement contained in Exhibit 1020 be treated
`
`as business confidential information and be kept separate from the files of the above
`
`captioned proceeding. In accordance with the agreement, the co-pending litigation
`
`will be dismissed with prejudice. There are no other agreements or understandings,
`
`oral or written, between the parties made in connection with, or in contemplation of,
`
`the termination of the above-referenced proceeding.
`
`1 The confidential agreement is being filed via PTAB E2E with access “For Board
`
`and Parties Only.”
`
`1
`
`
`
`In view of the resolution between the parties, no dispute remains between the
`
`parties as to United States Patent No. 6,564,249, and thus termination of this
`
`proceeding is appropriate as the Board has not yet decided the merits of this
`
`proceeding, a final written decision has not yet been entered, and no discovery has
`
`yet taken place – the Board having decided to institute trial only recently.
`
`Termination of this proceeding is also consistent with the “strong public policy
`
`reasons favoring settlement between the parties to a proceeding.” See Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
`
`For these reasons, the Parties respectfully request that the Board grant this
`
`joint motion for termination.
`
`Dated: December 1, 2020
`
`
`
`/Sasha G. Rao/
`Sasha G. Rao
`Reg. No. 57,017
`MAYNARD, COOPER & GALE, LLP
`Transamerica Pyramid Center
`600 Montgomery Street, Suite 2600
`San Francisco, CA 94111
`srao@maynardcooper.com
`Telephone: 415.646.4700
`
`Brandon H. Stroy
`Reg. No. 73,166
`bstroy@maynardcooper.com
`MAYNARD, COOPER & GALE, LLP
`Transamerica Pyramid Center
`600 Montgomery Street, Suite 2600
`San Francisco, CA 94111
`
`2
`
`
`
`bstroy@maynardcooper.com
`Telephone: 415.646.4700
`
`Attorneys for Petitioner
`
`/Warren Thomas/
`Warren J. Thomas (Reg. No. 70,581)
`Lawrence A. Aaronson (Reg. No. 38,369)
`Meunier Carlin & Curfman LLC
`999 Peachtree Street NE, Suite 1300
`Atlanta, GA 30309
`
`Attorneys for Patent Owner
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned hereby certifies that on this
`
`date, a true and correct copy of the foregoing was served via electronic mail on all
`
`counsel of record.
`
`Dated: December 1, 2020
`
`
`
`/Sasha G. Rao/
`Sasha G. Rao
`Reg. No. 57,017
`MAYNARD, COOPER & GALE, LLP
`Transamerica Pyramid Center
`600 Montgomery Street, Suite 2600
`San Francisco, CA 94111
`srao@maynardcooper.com
`Telephone: 415.646.4702
`
`Attorney for Petitioner
`
`4
`
`
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