From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Trials
`Joseph T. Miotke; Trials
`BEutermoser@KSLAW.com; Mikaela Stone (mikaela.stone@kslaw.com); Eric H. Chadwick; Erin Block; Rachel E.
`Gagliardi
`RE: IPR2023-00124/IPR2023-01199
`Tuesday, April 9, 2024 9:42:35 AM
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`Counsel,
`
`From the Board –
`
`The parties are authorized to file a Joint Motion to Terminate (as a Paper), and a Joint Request to
`File Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317(b) (as
`a separate Paper).
`
`
`The Joint Motion to Terminate should reference this authorization. The Joint Motion to Terminate
`also must update the Board concerning the status of any litigation or proceeding, including, but not
`limited to, proceedings in the U.S. Patent and Trademark Office, involving the subject patent, and
`advise the Board whether any litigation or proceeding involving the subject patent is contemplated in
`the foreseeable future. The Joint Motion to Terminate must include a true copy of any agreement or
`understanding (as an Exhibit to the Motion) and include a statement certifying that there are no
`collateral agreements or understandings made in connection with, or in contemplation of, the
`termination of the inter partes review. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(b).
`
`Any Joint Request to File Settlement Agreement as Business Confidential Information must be filed
`with the Joint Motion to Terminate. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Joseph T. Miotke <jtm@dewittllp.com>
`Sent: Friday, April 5, 2024 12:24 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: BEutermoser@KSLAW.com; Mikaela Stone (mikaela.stone@kslaw.com)
`<mikaela.stone@kslaw.com>; Eric H. Chadwick <ehc@dewittllp.com>; Erin Block
`<eblock@dewittllp.com>; Rachel E. Gagliardi <reg@dewittllp.com>
`Subject: IPR2023-00124/IPR2023-01199
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`To the Honorable Board:
`
`
`

`

`Petitioner AO Kaspersky Lab and Patent Owner Open Text Inc. respectfully request
`permission from the Board to file a Joint Motion to Terminate IPR2023-
`00124/IPR2023-01199.
`
`The parties have entered into agreements that resolve the entire dispute between the
`parties. The parties also seek permission to file a “Joint Request to File the
`Agreements as Business Confidential Information Pursuant to 35 U.S.C. § 317 and
`37 C.F.R. § 42.74.”
`
`If the Board needs further information, please let us know.
`
`Sincerely,
`
`Joe Miotke
`
`Joseph T. Miotke
`Partner | IP Litigation Practice Group Co-Chair
`Direct: 262.754.2871
`Mobile: 414.617.4761
`13845 Bishops Drive, Suite 300
`Brookfield, WI 53005
`
`
`
`