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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
` WOMBAT SECURITY TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`
` PHISHME, INC.,
`Patent Owner.
`
`
`Case PGR2017-00050
`Patent No. 9,674,221
`
`_______________
`
`____________________________________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327(a)
`
`la-1366902
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`
`
`PGR2017-00050
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`
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`Pursuant to 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72, Wombat Security
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`Technologies, Inc. (“Petitioner”) and PhishMe Inc. (“Patent Owner”) jointly move
`
`for termination of the post grant review of U.S. Patent No. 9,674,221 (“the ’221
`
`patent), Case No. PGR2017-00050, with the United States Patent and Trademark
`
`Office. This Joint Motion was authorized by the Board pursuant to its email dated
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`November 30, 2017.
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`Petitioner filed its petition for post grant review on September 11, 2017.
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`The parties have settled their dispute, and have reached agreement to terminate this
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`post grant review. The Settlement Agreement has been made in writing and was
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`executed by Petitioner and Patent Owner on November 29, 2017. A true copy of
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`the Settlement Agreement in accordance with 35 U.S.C. § 327(b) and 37 C.F.R. §
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`42.74(b) is being submitted concurrently herewith as Exhibit 2001. There are no
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`collateral agreements or understandings made in connection with, or in
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`contemplation of, the termination of this post grant review.
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`Submitted concurrently herewith is a request by Petitioner and Patent Owner
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`that the Settlement Agreement be treated as business confidential information, be
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`kept separate from the file of the involved patents, and be made available only to
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`Federal Government agencies on written request, or to any person on a showing of
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`good cause pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c).
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`la-1366902
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`2
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`PGR2017-00050
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`Patent Owner filed two patent infringement lawsuits against Petitioner,
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`subsequently consolidated, alleging infringement of the ’221 patent and two other
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`patents. The consolidated lawsuit is captioned PhishMe, Inc. v. Wombat Security
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`Technologies, Inc., C.A. No. 16-4030LPS-CJB, and was before the United States
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`District Court for the District of Delaware. The consolidated lawsuit has been
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`dismissed with prejudice. There are no other litigation or proceedings involving
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`the ’221 patent, and no litigation or proceeding is contemplated in the foreseeable
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`future in view of the Settlement Agreement.
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`No other petitioners remain in this post grant review, and no final written
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`decision on the merits has been entered. For at least these reasons, termination of
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`the post grant review is proper under 35 U.S.C. § 327(a) and 37 C.F.R. § 42.74(a).
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`Should this joint motion to terminate be denied, Petitioner would not continue to
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`participate in this proceeding.
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`la-1366902
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`3
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`
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`PGR2017-00050
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`Respectfully submitted:
`/Mark G. Knedeisen/
`Mark G. Knedeisen, Reg. No. 42,747
`Patrick J. McElhinny, Reg. No. 46,320
`Ragae Ghabrial, Reg. No. 59,104
`K&L Gates, LLP
`210 Sixth Avenue
`Pittsburgh, PA 15222
`Tel: (412) 355-6342
`Email: mark.knedeisen@klgates.com
`
`ATTORNEYS FOR PETITIONER
`
`/Mehran Arjomand/
`Mehran Arjomand, Reg. 48,231
`Erol C. Basol, Reg. No. 65,150
`MORRISON & FOERSTER LLP
`707 Wilshire Boulevard
`Los Angeles, CA 90017
`Tel: (213) 892-5630
`Email: Marjomand@mofo.com
`
`ATTORNEYS FOR PATENT OWNER
`
`Dated: December 4, 2017
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`
`
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`
`
`Dated: December 4, 2017
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`la-1366902
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`4
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`PGR2017-00050
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`I hereby certify that the attached JOINT MOTION TO TERMINATE
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`PROCEEDING UNDER 35 U.S.C. § 327(a) was served as of the below date via
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`electronic mail by agreement on the Petitioner at the following correspondence
`
`address(es):
`
`
`Mark G. Knedeisen
`Patrick J. McElhinny
`Laurén S. Murray
`K&L Gates, LLP
`210 Sixth Avenue
`Pittsburgh, PA 15222
`mark.knedeisen@klgates.com
`patrick.mcelhinny@klgates.com
`lauren.murray@klgates.com
`
`
`
`Dated: December 4, 2017
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`la-1366902
`
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`/Mehran Arjomand/
`Mehran Arjomand
`
`
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`
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`5
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`
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