Joint Motion to Terminate, IPR2020-00972
`U.S. Patent 8,714,445 B1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS,LLC
`Petitioner
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`v.
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`QWIKCASH, LLC
`Patent Owner
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`____________
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`Case No. IPR2020-00972
`Patent No. 8,714,445
` ____________
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` JOINT MOTION TO TERMINATE
`INTER PARTES REVIEW OF U.S. PATENT 8,714,445
`UNDER 37 C.F.R. 42.72
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`U.S. Patent 8,714,445 B1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
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`UNIFIED PATENTS,LLC
`Petitioner
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`v.
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`QWIKCASH, LLC
`Patent Owner
`
`____________
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`Case No. IPR2020-00972
`Patent No. 8,714,445
` ____________
`
`
` JOINT MOTION TO TERMINATE
`INTER PARTES REVIEW OF U.S. PATENT 8,714,445
`UNDER 37 C.F.R. 42.72
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`Joint Motion to Terminate, IPR2020-00972
`U.S. Patent 8,714,445 B1
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`Pursuant to 37 C.F.R. 42.72, Petitioner Unified Patents LLC
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`(“Unified”) and Patent Owner Qwikcash, LLC jointly request dismissal and
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`termination of the petition for Inter Partes Review of U.S. Patent 8,714,445
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`in IPR2020-00972.
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`Petitioner and Patent Owner have entered into a written confidential
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`settlement agreement that fully resolves this matter. The parties are
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`concurrently filing a copy of the settlement agreement as EX1027 along with
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`a request to treat it as confidential business information pursuant to 35
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`U.S.C. § 317(b). The undersigned represents that there are no other
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`agreements, oral or written, between the parties made in connection with, or
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`in contemplation of, the termination of the present proceeding and that
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`EX1027 represents a true and accurate copy of the agreement between the
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`parties that resolves the present proceeding.
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`On September 23, 2020, the Parties informed the Board of the
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`settlement via e-mail and requested authorization to file a joint motion to
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`terminate the petition with respect to both the Patent Owner and the
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`Petitioner. As set forth in an e-mail dated September 24, 2020, the Board
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`authorized the filing of the requested joint motion to terminate this petition.
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`Accordingly, Petitioner and Patent Owner jointly request termination of the
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`present proceeding.
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`Joint Motion to Terminate, IPR2020-00972
`U.S. Patent 8,714,445 B1
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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.
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`August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to
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`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d
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`1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert.
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`denied, 479 U.S. 950 (1986). The Federal Circuit places a particularly strong
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`emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
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`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
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`antagonism and hostility between parties). And, the Board’s Trial Practice
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`Guide stresses that “[t]here are strong public policy reasons to favor
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`settlement between the parties to a proceeding.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 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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`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
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`Joint Motion to Terminate, IPR2020-00972
`U.S. Patent 8,714,445 B1
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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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`Unified filed its petition for inter partes review on May 29, 2020.
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`The Board has not issued an Institution Decision instituting this proceeding.
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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 an Institution Decision.
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`The parties note that there is one pending district court litigation in
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`which the patent-at-issue has been asserted, QwikCash, LLC, v. Blackhawk
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`Networks Holdings, Inc., et al., No. 4:19-cv-876 (E.D. Tex. 2019).
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`Petitioner is not a party to that proceeding. Further, there are no other
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`USPTO proceedings pending regarding the patent-at-issue.
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`Therefore, the Parties respectfully request termination of this Inter
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`Partes Review of U.S. Patent 8,714,445 (IPR2020-00972).
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`Joint Motion to Terminate, IPR2020-00972
`U.S. Patent 8,714,445 B1
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`Respectfully submitted,
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`BY: /s/ Jason R. Mudd
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`Jason R. Mudd, Reg. No. 57,700
`Eric A. Buresh, Reg. No. 50,394
`Ashaf A. Fawzy, Reg. No. 67,914
`Alyssa Holtslander, Reg. No. 64,026
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`ATTORNEYS FOR PETITIONER
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`BY: /s/ Brian P. Lynch
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`Brian P. Lynch, Reg. No. 58,794
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`ATTORNEYS FOR PATENT OWNER
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`Joint Motion to Terminate, IPR2020-00972
`U.S. Patent 8,714,445 B1
`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
`September 25, 2020 the foregoing JOINT MOTION TO TERMINATE
`INTER PARTES REVIEW OF U.S. PATENT 8,714,445 UNDER 37 C.F.R.
`42.72 was served via electronic filing with the Board and via Electronic Mail
`on the following representatives of record for Patent Owner:
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`Brian P. Lynch (blynch@niro-mcandrews.com)
`Raymond P. Niro (rnirojr@niro-mcandrews.com)
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`/s/ Jason R. Mudd
`Jason R. Mudd, Reg. No. 57,700
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`ATTORNEY FOR PETITIONER
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