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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC., T-MOBILE USA, INC., and T-MOBILE US, INC.,
`Petitioner
`
`
`v.
`
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`
`____________
`
`Case IPR2014-01035
`Patent No. 5,659,891
`____________
`
`JOINT MOTION TO TERMINATE THE INTER PARTES REVIEW WITH
`RESPECT TO APPLE INC.
`
`
`
`Case IPR2014-01035, IPR2015-00018
`Patent No. 5,659,891
`
`
`
`Joint Motion to Terminate wrt Apple
`
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, Patent Owner Mobile
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`Telecommunications Technologies, LLC (“Patent Owner”) and Apple Inc.
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`(“Apple”) jointly request termination of Inter Partes Review Case No. IPR2014-
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`01035, which is directed to U.S. Patent No. 5,659,891 (the “’891 Patent”), with
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`respect to Apple.
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`On June 27, 2014, Apple filed a Petition for Inter Partes Review (“Apple
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`IPR” – which is the above-captioned Inter Partes Review, i.e., IPR2014-01035)
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`before the United States Patent Trial and Appeal Board (“the Board”). Patent
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`Owner’s preliminary response was filed on October 24, 2014 in the Apple IPR.
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`On January 22, 2015, the Board issued a Decision to Institute inter partes review
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`of the ’891 Patent in the Apple IPR. Paper 10.
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`On October 3, 2014, T-Mobile USA, Inc. and T-Mobile US, Inc. (“T-
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`Moble”) filed a Petition for Inter Partes Review (“T-Mobile IPR”) before the
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`Board (assigned IPR2015-00018). Patent Owner’s preliminary response was filed
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`on January 15, 2015 in the T-Mobile IPR. On April 8, 2015, the Board issued a
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`Decision to Institute inter partes review of the ’891 Patent in the T-Mobile IPR and
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`to join the Apple IPR and T-Mobile IPR (“Joined Inter Partes Review” – which is
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`also the above-captioned Inter Partes Review, i.e., IPR2014-01035). Paper 13 of
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`IPR2015-00018.
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`1
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`
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`Case IPR2014-01035, IPR2015-00018
`Patent No. 5,659,891
`
`
`
`Joint Motion to Terminate wrt Apple
`
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`Patent Owner has not filed a response in the Joined Inter Partes Review, and
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`one is not due (by stipulation of Apple, T-Mobile, and Patent Owner, filed
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`herewith) until June 21, 2015.
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`Patent Owner and Apple respectfully submit that termination with respect to
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`Apple is appropriate because they have reached an agreement resolving the dispute
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`involving the patent at issue in this Joined Inter Partes Review, it is prior to full
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`briefing on the issues raised in this Joined Inter Partes Review, and the Board has
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`not issued a final written decision. Further, Apple represents that it will no longer
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`participate even if the Board does not terminate its participation in this Joined Inter
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`Partes Review. That means Apple will file no further papers. It also will not be
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`participating in any oral argument.
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`The Board authorized the filing of the instant Motion in a conference call
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`dated April 21, 2015. IPR2013-00428, Paper No. 56 provides guidance as to the
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`content of a motion to terminate. There, the Board indicates that a joint motion,
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`such as this one, should (1) include a brief explanation as to why termination is
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`appropriate; (2) identify all parties in any related litigation involving the patents at
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`issue, and the status of each; and (3) identify any related proceedings currently
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`before the Office. IPR2013-00428, Paper No. 56 at 2. This Motion satisfies each
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`of the above requirements.
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`2
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`
`
`Case IPR2014-01035, IPR2015-00018
`Patent No. 5,659,891
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`
`
`Joint Motion to Terminate wrt Apple
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`Indeed, Apple and Patent Owner have entered into a Settlement Agreement
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`(“Apple Settlement Agreement”), a true copy of which is attached hereto as
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`Exhibit 2001, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).1
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`Patent Owner and Apple are concurrently filing a Joint Request that the
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`Apple Settlement Agreement, Confidential Exhibit 2001, shall be treated as
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`business confidential information, shall be kept separate from the file of the
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`involved patents, and shall be made available only to Federal Government agencies
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`on written request, or to any person on a showing of good cause pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. §42.74(c).
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`1. All parties in any pending related litigation involving the patents at
`issue, and current status of each such related litigation.
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`
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`Apple is not involved in any other pending related litigations involving the
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`’891 Patent. Other parties involved in litigations related to the ’891 Patent are
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`identified in the table that follows.
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`1 The Apple Settlement Agreement (Exhibit 2001) is being filed electronically via
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`the Patent Review Processing System (PRPS) as “Board Only,” because T-Mobile
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`is not a party to the Apple Settlement Agreement.
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`3
`
`
`
`Case IPR2014-01035, IPR2015-00018
`Patent No. 5,659,891
`
`
`
`Joint Motion to Terminate wrt Apple
`
`
`Case Name
`
`Mobile Telecommunicationas
`Technologies, LLC v. Leap
`Wireless Intrernational, Inc.
`and Cricket Communications,
`Inc.
`
`Case
`No.
`No.
`2:13-cv-
`00885-
`JRG-
`RSP
`
`Court
`
`Defendants
`
`E.D.
`TX.
`
`Leap Wireless
`Intrernational,
`Inc. and Cricket
`Communications,
`Inc.
`
`Mobile Telecommunicationas
`Technologies, LLC v. T-
`Mobile USA, Inc. and T-
`Mobile US, Inc.
`
`No2:13-
`cv-886-
`JRG-
`RSP
`
`E.D.
`TX.
`
`T-Mobile USA,
`Inc. and T-
`Mobile US, Inc
`
`Mobile Telecommunicationas
`Technologies, LLC v. AT&T
`Mobility LLC and AT&T
`Inc.
`
`2:14-
`CV-897-
`RSP
`
`ED.
`Tex.
`
`AT&T Mobility
`LLC and AT&T
`Inc.
`
`
`
`Status
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`On-going;
`Claim
`construction
`hearing held
`March 23,
`2015.
`Stayed until
`May 7, 2015
`for purposes
`of
`facilitating
`settlement.
`Scheduling
`Conf. held
`March 20,
`2015.
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`2. Related proceedings currently before the Office and Status.
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`Aside from this inter partes review proceeding, the ’891 Patent is also the
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`subject of the following proceeding(s) currently before the Office:
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`Related Proceeding Requestor/Petitioner
`IPR2015-00018
`T-Mobile
`
`
`
`Status
`Joined with this proceeding
`IPR2014-01035
`
`4
`
`
`
`Joint Motion to Terminate wrt Apple
`
`
`Respectfully submitted,
`
`
`
`/John R. Kasha/
`John R. Kasha (Reg. No. 53,100)
`Lead Counsel for Patent Owner
`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
`
`
`
`
`
`
`
`/W. Karl Renner/
`W. Karl Renner (Reg. 41,265)
`Lead Counsel for Apple Inc.
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel. 202-783-5070
`
`Case IPR2014-01035, IPR2015-00018
`Patent No. 5,659,891
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`Dated: April 22, 2015
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`Dated: April 22, 2015
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`5
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. § 1.550(f), a copy of Joint Motion to
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`Terminate with Respect to Apple Inc. and the supporting exhibit filed by the
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`Mobile Telecommunications Technologies, LLC on April 22, 2015 was duly
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`served via electronic mail upon IPR39521-0004IP1@fr.com - counsel of record for
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`Apple Inc. (“Apple”) and upon 01048-21IP891@McKoolSmith.com - counsel of
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`record for T-Mobile USA, Inc. and T-Mobile US, Inc. (“T-Mobile”).
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`The parties have agreed to electronic service in this matter.
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`Respectfully submitted,
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`
`
`
`/John R. Kasha/
`John R. Kasha (Reg. No. 53,100)
`Lead Counsel for Patent Owner
`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
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`Dated: April 22, 2015
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