Nomadix, Inc.

Patent Trials and Appeals Board

May 6, 2020

IPR2019-00253 (P.T.A.B. May. 6, 2020)

Trials@uspto.gov Paper 35
571-272-7822 Entered: May 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
Petitioner,
v.
NOMADIX, INC.,
Patent Owner.
_______________

IPR2019-00211 (Patent 7,953,857 B2)
IPR2019-00253 (Patent 8,626,922 B2)1
_______________

Before SALLY C. MEDLEY, DANIEL J. GALLIGAN, and
JASON W. MELVIN, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

TERMINATION
Dismissal After Institution of Trial
37 C.F.R. § 42.72

1 This Order is being entered in each of the above-identified proceedings.
The proceedings have not been consolidated and the parties are not
authorized to use a consolidated caption.
IPR2019-00211, Patent 7,953,857 B2
IPR2019-00253, Patent 8,626,922 B2

2

On May 6, 2020, the parties filed a Joint Motion to Terminate
Proceeding in each of IPR2019-00211 and IPR2019-00253 pursuant to 37
C.F.R. § 42.72. IPR2019-00211, Paper 33.2 The parties represent that in
Nomadix, Inc. v. Guest Tek Interactive Entertainment Ltd., Case No. CV19-
04980 AB (FFMx), the District Court granted Patent Owner’s motion for
summary judgment, determining that, by filing petitions in these
proceedings, Petitioner violated a forum-selection clause per a patent license
agreement between the parties. Id. (citing Ex. 2009). The parties further
represent that the District Court’s judgment orders Petitioner to join Patent
Owner to move to terminate the present proceedings. Id. (citing Ex. 2010).
In accordance with the judgment, the parties jointly move to terminate the
proceedings. Id.3
On May 28 and May 30, 2019, we instituted review respectively in
IPR2019-00253 and IPR2019-00211. At this juncture of the proceedings,
we have not entered a final decision. Based on the facts of these
proceedings, it is appropriate to terminate the proceedings without rendering
a final written decision. See 37 C.F.R. § 42.72.

2 For purposes of this decision, we cite to the motion filed in IPR2019-
00211, as it is representative of the motion filed in both proceedings.
3 In authorizing the parties to file the joint motion to terminate, we instructed
the parties that they must file any agreements required under 35 U.S.C.
§ 317(b), or, if there are no such agreements, the parties should represent
that in the motion. Ex. 3003. We interpret the parties’ silence as a
representation that no such agreement required under 35 U.S.C. § 317(b)
exists.
IPR2019-00211, Patent 7,953,857 B2
IPR2019-00253, Patent 8,626,922 B2

3

It is
ORDERED that the joint motions to terminate the proceedings are
granted; and
FURTHER ORDERED that the proceedings are terminated.

PETITIONER:

Jeffrey W. Lesovitz
Steven J. Rocci
Daniel J. Goettle
BAKER & HOSTETLER LLP
jlesovitz@bakerlaw.com
srocci@bakerlaw.com
dgoettle@bakerlaw.com

PATENT OWNER:

Douglas G. Muehlhauser
William H. Shreve
KNOBBE, MARTENS, OLSON & BEAR, LLP
2dgm@knobbe.com
2whs@knobbe.com