UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Loctek, Inc.
`Petitioner
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`v.
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`Varidesk LLC
`Patent Owner.
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`
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`Patent No. 9,554,644 to Flaherty et al.
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`Case No. PGR2017-00036
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`JOINT MOTION TO DISMISS PROCEEDING
`PURSUANT TO 37 C.F.R. § 42.71(a)
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`1
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`Paper No. 6
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Loctek, Inc.
`Petitioner
`
`v.
`
`Varidesk LLC
`Patent Owner.
`
`
`
`Patent No. 9,554,644 to Flaherty et al.
`
`Case No. PGR2017-00036
`
`
`
`JOINT MOTION TO DISMISS PROCEEDING
`PURSUANT TO 37 C.F.R. § 42.71(a)
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`1
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`Paper No. 6
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`Case PGR2017-00036
`Patent No. 9,554,644
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`Pursuant to 37 C.F.R. § 42.71(a), Loctek Inc. (“Loctek” or “Petitioner”) and
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`Joint Motion to Terminate Proceeding
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`
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`Varidesk LLC (“Patent Owner”) (jointly, the “Parties”) jointly request dismissal of
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`PGR2017-00036, which is directed to U.S. Patent No. 9,554,644 (the “’644
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`Patent”).
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`On June 27, 2017, Loctek filed a Petition for Post Grant Review (“Loctek
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`PGR”) – which is the above-captioned Post Grant Review before the United States
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`Patent Trial and Appeal Board. Patent Owner’s Preliminary Response is not due
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`until October 18, 2017 and Patent Owner has not filed a response yet. Petitioner
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`and Patent Owner contacted the Board about this Motion and the Board indicated
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`that the joint motion should include the following: (1) a brief explanation as to why
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`dismissal is appropriate; (2) identify all defendants in any related district court
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`litigation involving U.S. Patent No. 9,554,644; and (3) discuss the current status of
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`each such related litigation, if any, with respect to each party to the litigation. This
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`information is provided below.
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`1. Dismissal is appropriate
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`No final written decision on the merits of this post grant review proceeding
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`has been entered. The Parties have settled their dispute, and have reached
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`agreement to dismiss this post grant review.
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`37 C.F.R. § 42.71(a) provides that “[t]he Board may take up petitions or
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`motions for decisions in any order, may grant, deny, or dismiss any petition or
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`2
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`Case PGR2017-00036
`Patent No. 9,554,644
`motion, and may enter any appropriate order.” Generally, the Board expects that a
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`Joint Motion to Terminate Proceeding
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`proceeding will terminate after the filing of a settlement agreement. See, e.g.,
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`Office Patent Trial Practice Guide, 77 Fed.Reg. 48,756, 48,768 (Aug. 14, 2012).
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`Also, under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Dismissal of the Loctek
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`PGR is appropriate here because a final written decision has not been reached in
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`this Review, Patent Owner has not submitted a Preliminary Response, the Parties
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`have reached settlement resolving their disputes, and the Parties are jointly moving
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`to dismiss the Loctek PGR. Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b),
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`attached hereto as confidential Exhibit 1016 is a true and correct copy of the
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`settlement agreement. The Parties desire that Exhibit 1016 be maintained as
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`business confidential information under 37 C.F.R. §42.74(c) and a separate joint
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`request to that effect is being filed herewith.
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`Based on the foregoing, dismissal is appropriate.
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`2. Defendants in related litigations and 3. The status of each
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`For the Board’s reference, below are the parties involved in litigations related to
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`the ’644 Patent and the status of each.
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`3
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`Case PGR2017-00036
`Patent No. 9,554,644
`Case Name
`Case No.
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`Joint Motion to Terminate Proceeding
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`Defendants
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`Status
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`Court
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`N.D. TX
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`No. 3-17-cv-
`00907
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`No. 337-TA-
`1054
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`ITC
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`Varidesk LLC
`v. Ningbo
`Loctek Visual
`Technology
`Corporation, et
`al.
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`Height-
`Adjustable
`Desk
`Platforms and
`Components
`Thereof
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`Stayed and the
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`parties plan to
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`move to
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`dismiss
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`ALJ Granted
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`Motion to
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`Terminate
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`Ningbo Loctek
`Visual
`Technology
`Corporation, et
`al.
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`Ningbo Loctek
`Visual
`Technology
`Corporation,
`Zhejiang
`Loctek Smart
`Drive
`Technology
`Co., Ltd.,
`Loctek Inc.,
`and Flexispot
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`Date: September 27, 2017
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`Date: September 27, 2017
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`Respectfully submitted,
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`By: /s/ Patrick J. McCarthy
`Patrick J. McCarthy
`Registration No. 62,762
`2101 L Street, N.W., Suite 1000
`Washington, D.C. 20037
`Phone: (202) 533-2386
`Fax: (202) 331-3101
`Counsel for Petitioner
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`By: /Steven J. Schwarz/
`Steven J. Schwarz
`Registration No. 47,070
`Venable LLP
`600 Massachusetts Ave.
`Washington, D.C. 20001
`Phone: 202.344.4295
`4
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`Case PGR2017-00036
`Patent No. 9,554,644
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`Joint Motion to Terminate Proceeding
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`Fax: 202.344.8300
`Email: sjschwarz@venable.com
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`5
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`Case PGR2017-00036
`Patent No. 9,554,644
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`Joint Motion to Terminate Proceeding
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on September 27, 2017, a complete and entire copy of this Joint Motion to
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`Dismiss Proceeding and accompanying exhibits were provided via email to the
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`Patent Owner by serving the correspondence email address of record as follows:
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`Steven J. Schwarz
`Registration No. 47,070
`Venable LLP
`600 Massachusetts Ave. Washington, D.C. 20001
`Email: sjschwarz@venable.com
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`William D. Coston (Pro Hac Vice Pending)
`Venable LLP
`600 Massachusetts Ave.
`Washington, D.C. 20001
`Email: wdcoston@venable.com
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`Date: September 27, 2017
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`Respectfully submitted,
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`By: /s/ Patrick J. McCarthy
`Patrick J. McCarthy
`Registration No. 62,762
`2101 L Street, N.W., Suite 1000
`Washington, D.C. 20037
`Phone: (202) 533-2386
`Fax: (202) 331-3101
`Counsel for Petitioner
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`6
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