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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BUMBLE TRADING LLC,
`Petitioner
`
`v.
`
`KINECTUS LLC
`Patent Owner
`
`
`Case IPR2021-00765
`U.S. Patent No. 9,294,428 B2
`
`
`
`JOINT MOTION TO TERMINATE
`
`
`
`
`
`
`
`
`
`Joint Motion to Terminate
`IPR2021-00765
`U.S. Patent No. 9,294,428 B2
`
`RELIEF REQUESTED
`I.
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization provided by email on January 3, 2022, Petitioner Bumble Trading LLC
`
`(“Petitioner”) and Patent Owner KinectUs LLC (“Patent Owner”) jointly request
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`termination of Case IPR2021-00765, which involves U.S. Patent No. 9,294,428 (the
`
`“’428 Patent”).
`
`II.
`
`STATUS OF RELATED PROCEEDINGS
`
`A.
`
`Pending Judicial Matters Involving the ’428 Patent
`
`The ’428 Patent is also involved in KinectUs LLC v. Bumble Trading LLC, et
`
`al., Case No. 6:20-cv-00942-ADA (W.D. Tex.) (the “District Court Litigation”), in
`
`which Patent Owner is the plaintiff and Petitioner, as well as its real-party-in-interest
`
`Bumble Inc., are defendants. Patent Owner and those defendants are jointly moving
`
`to dismiss the District Court Litigation with prejudice. The ’428 Patent is not
`
`involved in any other pending litigation.
`
`B.
`
`Pending Administrative Matters Involving the ’428 Patent
`
`There are six other patents relating to the ’428 Patent. Each of those patents
`
`are the subject of instituted inter partes review proceedings. Those related
`
`proceedings are summarized in the below table. The parties are also jointly moving
`
`to terminate the below proceedings.
`
`
`
`
`
`-1-
`
`
`
`
`
`Joint Motion to Terminate
`IPR2021-00765
`U.S. Patent No. 9,294,428 B2
`
`
`Proceeding
`
`IPR2021-00763
`
`IPR2021-00764
`
`IPR2021-00766
`
`IPR2021-00900
`
`IPR2021-00901
`
`IPR2021-01014
`
`Patent
`
`10,117,074
`
`10,516,979
`
`9,763,070
`
`10,575,145
`
`9,584,464
`
`10,117,075
`
`
`III. FILING OF SETTLEMENT AND LICENSE AGREEMENT AND
`CERTIFICATION OF NO COLLATERAL AGREEMENTS OR
`UNDERSTANDINGS
`
`The parties have entered into a Settlement Agreement, a true copy of which is
`
`being filed herewith as Exhibit 1040, along with a Joint Request That Settlement
`
`Agreement Be Treated As Business Confidential Information Under 35 U.S.C. §
`
`317(b). The parties certify that there are no collateral agreements or understandings
`
`made in connection with, or in contemplation of, the termination of IPR2021-00765.
`
`IV. REASONS WHY TERMINATION IS APPROPRIATE
`
`The statutory provision on a settlement relating to inter partes reviews
`
`provides that an inter partes review “shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner, unless the
`
`Office has decided the merits of the proceeding before the request for termination is
`
`filed.” 35 U.S.C. § 317(a). Indeed, the Board has stated an expectation that
`
`-2-
`
`
`
`
`
`
`Joint Motion to Terminate
`IPR2021-00765
`U.S. Patent No. 9,294,428 B2
`proceedings such as these will be terminated after the filing of a settlement
`
`agreement: “There are strong public policy reasons to favor settlement between the
`
`parties to a proceeding.…The Board expects that a proceeding will terminate after
`
`the filing of a settlement agreement, unless the Board has already decided the merits
`
`of the proceeding.” Patent Trial and Appeal Board Consolidated Trial Practice
`
`Guide, November 2019, at 86.
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`The parties have settled all of their disputes involving or relating to the ’428
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`patent, including above-referenced IPRs and the District Court Litigation, which is
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`the only litigation between Petitioner and Patent Owner involving the ’428 patent.
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`The parties are jointly moving to dismiss the District Court Litigation with prejudice.
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`There are no collateral agreements or understandings made in connection with, or in
`
`contemplation of, the termination of IPR2021-00765. Additional litigation
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`regarding this patent is not currently contemplated.
`
`Here, the Board has not decided the merits of the proceeding. The
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`instant motion is being filed on January 10, 2022, only several months after the
`
`Board issued its institution decision. The parties have not taken any discovery in
`
`this proceeding, oral argument has not taken place, and the Board has not
`
`issued a final written decision. See Scheduling Order, Paper 14.
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`-3-
`
`
`
`Joint Motion to Terminate
`IPR2021-00765
`U.S. Patent No. 9,294,428 B2
`Because the Board has not yet decided the merits, and because the parties have
`
`resolved all their disputes regarding the ’428 Patent, termination is appropriate.
`
`Termination under these circumstances would conserve the Board’s resources and
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`help promote the Board’s policy of ensuring “just, speedy, and inexpensive”
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`resolution to every procedure. See 37 C.F.R. § 42.1(b). The Board has terminated
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`proceedings under similar circumstances. See, e.g., Square, Inc. v. SendSig, LLC,
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`IPR2020-00930, Paper 8 (P.T.A.B. Dec. 8, 2020) (granting joint motion to terminate
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`IPR shortly after institution).
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`V. CONCLUSION
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`For the above reasons, the parties respectfully request the Board grant the
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`parties’ Joint Motion to Terminate this proceeding in its entirety and grant the
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`request to treat the parties’ Settlement Agreement as business confidential
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`information.
`
`Dated: January 10, 2022
`
`COOLEY LLP
`ATTN: PATENT GROUP
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, D.C. 20004-2400
`Tel: (202) 842-7885 Fax: (202) 842-7899
`
`/Erik B. Milch/
`Erik B. Milch
`Reg. No. 42,887
`Counsel for Petitioner
`
`-4-
`
`
`
`Joint Motion to Terminate
`IPR2021-00765
`U.S. Patent No. 9,294,428 B2
`
`HALL BOOTH SMITH, P.C.
`191 Peachtree Street NE, Suite 2900
`Atlanta, GA 30303
`T: 404.586.6601
`F: 404.954.5020
`
`/Rodney R. Miller /
`Rodney R. Miller
`Reg. No. 66,073
`Counsel for Patent Owner
`
`-5-
`
`
`
`Joint Motion to Terminate
`IPR2021-00765
`U.S. Patent No. 9,294,428 B2
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§42.6(e)(4)(i) et seq., a complete copy of the attached
`Joint Motion to Terminate, is being served via email on the 10th day of
`January, 2022, upon Patent Owner’s appointed attorneys of record:
`
`Rodney R. Miller
`rmiller@hallboothsmith.com
`
`Gaylon Hollis
`ghollis@hallboothsmith.com
`
`Daniel C. Miller
`dmiller@hallboothsmith.com
`
`Dated: January 10, 2022
`
`COOLEY LLP
`ATTN: PATENT GROUP
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, D.C. 20004-2400
`Tel: (202) 842-7885 Fax: (202) 842-7899
`
`/Erik B. Milch/
`Erik B. Milch
`Reg. No. 42,887
`
`-6-
`
`
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