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`Joint Motion to Terminate
`IPR2020-01157
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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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`DELL INC.,
`Petitioner,
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`v.
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`3G LICENSING S.A.,
`Patent Owner.
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`Case No. IPR2020-01157
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`U.S. Patent No. 7,274,933
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`Joint Motion to Terminate Proceedings
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`Joint Motion to Terminate
`IPR2020-01157
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`I.
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`INTRODUCTION
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`Petitioner Dell Inc. (“Dell”) and Patent Owner 3G Licensing S.A. (“3G”)
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`have reached a settlement as to all the disputes in this proceeding. Pursuant to 35
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`U.S.C. § 317(a) and 37 C.F.R. § 42.74, Dell and 3G (the Parties) jointly move to
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`terminate the present inter partes review proceeding.
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`II.
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`STATEMENT OF FACTS
`Dell and 3G have reached a Settlement and License Agreement
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`(“Agreement”) to resolve the Parties’ disputes at issue in this proceeding. The
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`Agreement settles this proceeding. Pursuant to the Agreement, Dell will no longer
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`be participating in IPR2020-1157 and there are no remaining Petitioners for this IPR.
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`The Agreement also settles the Parties’ dispute in related District Court litigation:
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`Sisvel Int’l S.A. v. Dell, Inc., C.A No. 1:19-cv-01247-LPS (D. Del.). The Parties are
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`filing a joint motion to dismiss the litigation. No litigation or other proceeding
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`between the parties involving the ’933 patent or any related patent is contemplated
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`in the foreseeable future.
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`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ Agreement is in writing, and a
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`true and correct copy is being filed as Exhibit 1034. The Agreement is being filed
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`electronically with access to “Board Only.” A “Joint Request to File Settlement
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`Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317 and
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`37 C.F.R. § 42.74” is being filed concurrently with this Joint Motion to Terminate
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`Joint Motion to Terminate
`IPR2020-01157
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`to treat the Agreement as business confidential information and to keep it separate
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`from the files of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(c).
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`III. TERMINATION IS APPROPRIATE
`First, termination is proper under 35 U.S.C. § 317(a) because the parties are
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`jointly requesting termination and the Office has not yet “decided the merits of the
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`proceeding[.]” Under section 317(a), an inter partes review shall be terminated upon
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`such joint request “unless the Office has decided the merits of the proceeding before
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`the request for termination is filed.” There are no other preconditions of 35 U.S.C.
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`§ 317(a). Under § 317(a), a decision on the merits is something beyond a decision
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`instituting trial or a decision offering preliminary guidance. In this proceeding, no
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`decision on the merits has been made; the present motion is being submitted prior to
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`oral argument and a decision. Accordingly, the Parties are entitled to terminate these
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`proceedings under upon joint request.
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`Second, the Parties have reached a settlement as to all the disputes in this
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`proceeding. A true copy of the Agreement is filed concurrently herewith. See
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`Confidential Exhibit 1034. No other such agreements, written or oral, exist between
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`or among the Parties relating to this proceeding. The Parties thus satisfy the
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`requirements of 35 U.S.C. § 317(b).
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`Joint Motion to Terminate
`IPR2020-01157
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`Third, “[t]here are strong public policy reasons to favor settlement between
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`the parties to a proceeding.” 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). “The
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`Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding.” Id.
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`(citing 35 U.S.C. §§317(a)). Termination would save significant further expenditure
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`of resources by the Parties and the Board. Termination as requested would also
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`further the purpose of inter partes review proceedings to provide an efficient and
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`less costly alternative forum for patent disputes. Further, maintaining the proceeding
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`would discourage future settlements, as patent owners in similar situations would
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`have a strong disincentive to settle if they perceived that an inter partes review
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`would continue regardless of a settlement.
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`IV. CONCLUSION
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`For the foregoing reasons, the Parties respectfully request that the Board
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`terminate this inter partes review.
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`Joint Motion to Terminate
`IPR2020-01157
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`DATED: December 10, 2021
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`Respectfully Submitted,
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`/Brian M. Buroker/
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`Brian M. Buroker (Reg. No. 39,125)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Ave. NW
`Washington, DC 20036
`Phone: (202) 955-8500
`Fax: (202) 467-0539
`Email: bburoker@gibsondunn.com
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`Attorney for Petitioner Dell Inc.
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`Joint Motion to Terminate
`IPR2020-01157
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service on the Patent Owner, pursuant to 37 C.F.R.
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`§ 42.6(e), by electronic (e-mail) delivery of a true copy of the foregoing JOINT
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`MOTION TO TERMINATE PROCEEDINGS to lead and back-up counsel of record
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`for Patent Owner as follows:
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`TD-PTAB@devlinlawfirm.com
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`nbenchell@devlinlawfirm.com
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`sberger@devlinlawfirm.com
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`ademarco@devlinlawfirm.com
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`dlflitparas@devlinlawfirm.com
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`DATED: December 10, 2021
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`By:
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`/Brian M. Buroker/
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`Brian M. Buroker (Reg. No. 39,125)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Ave. NW
`Washington, DC 20036
`Phone: (202) 955-8500
`Fax: (202) 467-0539
`Email: bburoker@gibsondunn.com
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`Attorney for Petitioner Dell Inc.
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