IPR2015-01607

U.S. Patent 7,113,996

DOCKET NO.: 2211726-00121US1
Filed on behalf of Unified Patents Inc.
By: David L. Cavanaugh, Reg. No. 36,476
Thomas Anderson, Reg. No. 37,063
Michael Van Handel, Reg. No. 68,292
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Ave., NW
Washington, DC 20006
Tel: (202) 663-6000
Email: David.Cavanaugh@wilmerhale.com
Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20009
Tel: (202) 805-8931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
UNIFIED PATENTS INC.
Petitioner
v.
ELIA DATA OF TEXAS, LLC
Patent Owner
IPR2015-01607
Patent 7,113,996
JOINT MOTION TO TERMINATE
UNDER 35 U.S.C. 317(a)

IPR2015-01607
U.S. Patent 7,113,996
Pursuant to the Order of November 16, 2015, and to 35 U.S.C.
317(a), Petitioner Unified Patents Inc. (Unified) and Patent Owner Elia
Data of Texas LLC (Elia Data) jointly request termination of the Inter
Partes Review of U.S. Patent 7,113,996, in IPR2015-01607.
On November 12, 2015, the Parties informed the Board of the
settlement and requested a phone conference with the Board requesting
authorization to file a joint motion to terminate the proceeding with respect
to both the Patent Owner and the Petitioner. In a conference call with the
Board on November 16, 2015, the Parties confirmed that settlement had
been reached.
During the conference call of November 16, 2015 the Board
authorized the filing of the requested joint motion to terminate this
proceeding as to both parties.
I.

Status of Litigations and Proceedings

U.S. Patent No. 7,113,996 has been asserted against several

companies in litigation. The litigations and their respective statuses are

provided in the table below. Unified Patents Inc. is not a party in any of
these litigations.

The settlement agreement between the Parties, and

termination of this proceeding, will have no impact on the litigations

provided in the table below.
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IPR2015-01607
U.S. Patent 7,113,996

Case Caption
Elia Data of Texas,
LLC v. SugarSync,
Inc.
Elia Data of Texas,
LLC v. Google, Inc.
Elia Data of Texas,
LLC v. Box, Inc.
Elia Data of Texas,
LLC v. Dropbox, Inc.
Elia Data of Texas,
LLC v. Amazon.com,
LLC
Elia Data of Texas,
LLC v. Apple Inc.
Elia Data of Texas,
LLC v. International
Business Machines
Corp.
Elia Data of Texas,
LLC v. Citrix
Systems, Inc.
Elia Data of Texas,
LLC v. Microsoft
Corp.

Case
Number
2:15-cv00597

District

Case Filed

Status

EDTX

May 1, 2015

Pending

2:15-cv00592
2:15-cv00594
2:15-cv00593
2:13-cv00517

EDTX

May 1, 2015

EDTX

May 1, 2015

EDTX

May 1, 2015

Dismissed,
Nov. 6, 2015
Dismissed,
Oct. 30, 2015
Pending

EDTX

Jun. 21, 2013

Dismissed,
May 16, 2014

2:13-cv00147
2:12-cv00320

EDTX

Feb. 21, 2013

EDTX

Jun. 12, 2012

Dismissed,
Jul. 16, 2013
Dismissed,
Aug. 2, 2013

2:12-cv00257

EDTX

Apr. 25, 2012

Dismissed,
Oct. 17, 2012

2:12-cv00185

EDTX

Apr. 5, 2012

Dismissed,
Oct. 12, 2012

U.S. Patent No. 7,113,996 is not believed to be involved in any

litigations or proceedings other the instant inter partes review proceeding
and the litigations listed in the table above.
II.

Termination as to Patent Owner and Petitioner is Appropriate

This inter partes review has not been instituted. Termination of this

IPR is appropriate as the Board has not yet decided the merits of the
3

IPR2015-01607
U.S. Patent 7,113,996
proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
48756, 48768 (Aug. 14, 2012). Unified filed its petition for inter partes
review on July 22, 2015. Elia Data waived the right to file a preliminary
response on October 29, 2015. The parties have now settled their dispute,
and have reached agreement to terminate this inter partes review.
This Settlement Agreement has been made in writing, and a true and
correct copy shall be filed with this Office as business confidential
information pursuant to 35 U.S.C. 317(b). As stated in 35 U.S.C. 317(a),
because Unified and Elia Data request this termination as to Petitioner
Unified, no estoppel under 35 U.S.C. 315(e) shall attach to Unified.
There has been no institution in this IPR. Ending this IPR early
promotes the Congressional goal of establishing a more efficient patent
system by limiting unnecessary and counterproductive costs. See Changes to
Implement

Inter

Partes

Review

Proceedings,

Post-Grant

Review

Proceedings, and Transitional Program for Covered Business Method

Patents, 77 Fed. Reg. 48,680 (Aug.14, 2012). Permitting termination as to all
parties provides certainty and fosters an environment that promotes
settlements, creating a timely, cost-effective alternative to litigation.
Therefore, Unified and Elia Data jointly request termination of the
Inter Partes Review of U.S. Patent No., Case No. IPR2015-01607.
4

IPR2015-01607
U.S. Patent 7,113,996

Date: November 16, 2015

Respectfully submitted,
/David L. Cavanaugh/
David L. Cavanaugh
Registration No. 36,476
David.Cavanaugh@wilmerhale.com
WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue NW
Washington, DC 20006
Tel: (202) 663-6000
Fax: (202) 663-6363

IPR2015-01607
U.S. Patent 7,113,996
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a copy of the foregoing Joint Motion
to Terminate the Proceeding for Inter Partes Review of U.S. Patent
7,113,996, a copy of a Joint Request to File Settlement Agreement as
Business Confidential Information under 35 U.S.C. 317, and a
Confidential Settlement and License Agreement, were served on November
16, 2015 via electronic mail directed to the attorney of record for the patent
at the following address: rburns@burnsiplaw.com.

Patent Owner has

consented to electronic service.

Date: November 16, 2015

Respectfully submitted,
/Michael Van Handel/
Michael Van Handel, Reg. No. 68,292
Michael.VanHandel@wilmerhale.com
WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue NW
Washington, DC 20006
Tel: (202) 663-6000
Fax: (202) 663-6363