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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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`T-MOBILE USA, INC. and T-MOBILE US, INC.,
`Petitioner
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`
`v.
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`
`____________
`
`Case IPR2014-01035
`Patent No. 5,659,891
`____________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`
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`Case IPR2014-001035
`Patent No. 5,659,891
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`
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`Joint Motion to Terminate Proceeding
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`Pursuant to 35 U.S.C. § 317(a), T-Mobile USA, Inc. and T-Mobile US, Inc.
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`(“T-Mobile” or Petitioner) and Mobile Telecommunications Technologies, LLC
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`(“Patent Owner”) (jointly, the “Parties”) jointly request termination of IPR2014-
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`01035, which is directed to U.S. Patent No. 5,659,891 (the “’891 Patent”).
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`On June 27, 2014, Apple Inc. (“Apple”) filed a Petition for Inter Partes
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`Review (“Apple IPR” – which is the above-captioned Inter Partes Review, i.e.,
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`IPR2014-01035) before the United States Patent Trial and Appeal Board (“the
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`Board”). Patent Owner’s preliminary response was filed on October 24, 2014. On
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`January 22, 2015, the Board issued a Decision to Institute inter partes review of
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`the ’891 Patent in the Apple IPR. Paper 10.
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`On October 3, 2014, T-Mobile filed a Petition for Inter Partes Review (“T-
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`Mobile IPR”) before the Board (assigned IPR2015-00018). Patent Owner’s
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`preliminary response was filed on January 15, 2015 in the T-Mobile IPR. On April
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`8, 2015, the Board issued a Decision to Institute inter partes review of the ’891
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`Patent in the T-Mobile IPR and to join the Apple IPR and T-Mobile IPR (“Joined
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`Inter Partes Review” – which is also the above-captioned Inter Partes Review,
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`i.e., IPR2014-01035). Paper 13 of the T-Mobile IPR, i.e., IPR2015-00018. See
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`also, paper 16 of the Apple IPR, i.e., IPR2014-01035.
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`On April 22, 2015, Apple and Patent Owner filed a Joint Motion to
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`Terminate with respect to Apple, paper 14. On April 27, 2015, the Board issued a
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`1
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`Case IPR2014-001035
`Patent No. 5,659,891
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`decision granting the Joint Motion to Terminate with respect to Apple, paper 17.
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`Joint Motion to Terminate Proceeding
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`Patent Owner has not filed a response, and one is not due (by stipulation of
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`Petitioner and Patent Owner, paper 13) until June 21, 2015. No final written
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`decision on the merits of this inter partes review proceeding has been entered. The
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`Parties have settled their dispute, and have reached agreement to terminate this
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`inter partes review.
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77
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`Fed.Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
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`instant Motion in an email dated May 19, 2015. IPR2013-00428, Paper No. 56
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`provides guidance as to the content of a motion to terminate. There, the Board
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`indicates that a joint motion, such as this one, should (1) include a brief
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`explanation as to why termination is appropriate; (2) identify all parties in any
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`related litigation involving the patents at issue, and the status of each; and (3)
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`identify any related proceedings currently before the Office. IPR2013-00428,
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`Paper No. 56 at 2. This Motion satisfies each of the above requirements.
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`Indeed, the Parties have entered into a Settlement Agreement, and a true
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`copy of the same is attached hereto as Exhibit 2003, as required by 35 U.S.C. §
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`2
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`Case IPR2014-001035
`Patent No. 5,659,891
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`317(b) and 37 C.F.R. § 42.74(b).1 The Parties desire that the Settlement
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`Joint Motion to Terminate Proceeding
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`Agreement (Exhibit 2003) be maintained as business confidential information
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`under 37 C.F.R. §42.74(c) and a separate joint request to that effect is being filed
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`on even date herewith.
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`1. Reasons Why Termination is Appropriate.
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`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.” With respect to T-Mobile,
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`termination is appropriate because a final written decision has not been reached in
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`this Review. Indeed, Patent Owner has not yet filed its Response, nor has T-
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`Mobile filed responsive papers. Termination of this proceeding with respect to T-
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`Mobile is further appropriate because, if this Motion is granted, T-Mobile will not
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`be participating as a party in this proceeding going forward. To this point, the
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`Parties have settled their dispute and executed the earlier-referenced Settlement
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`Agreement to terminate this proceeding as to T-Mobile, as well as the Parties’
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`related district court litigation. The Parties agree that this district court litigation
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`1 The Settlement Agreement is being filed electronically via the Patent Review
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`Processing System (PRPS) as “Board Only.”
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`3
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`Case IPR2014-001035
`Patent No. 5,659,891
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`will be dismissed per the Parties’ Settlement Agreement. For all these reasons, the
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`Joint Motion to Terminate Proceeding
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`Parties respectfully request termination of this proceeding with respect to T-
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`Mobile.
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`Moreover, Petitioner, T-Mobile, does not oppose Patent Owner in seeking
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`termination of this inter partes review proceeding altogether.
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`Because § 317(a) indicates that the USPTO is not required to terminate an
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`inter partes review when no petitioner remains in the proceeding, Patent Owner
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`provides its own additional comments as to why termination with respect to Patent
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`Owner is proper in Patent Owner’s Explanation as to Why Termination Is
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`Appropriate, attached hereto as Exhibit 2004.
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`2. 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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`Petitioner is not involved in any other pending related litigations involving
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`the ’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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`4
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`
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`Case IPR2014-001035
`Patent No. 5,659,891
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`
`Case Name
`Mobile
`Telecommunicationas
`Technologies, LLC v.
`Leap Wireless
`Intrernational, Inc.
`and Cricket
`Communications,
`Inc.
`Mobile
`Telecommunicationas
`Technologies, LLC v.
`AT&T Mobility LLC
`and AT&T Inc.
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`
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`Joint Motion to Terminate Proceeding
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`Case No. Court
`No. 2:13-
`E.D.
`cv-00885-
`TX.
`JRG-RSP
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`Defendants
`Leap Wireless
`Intrernational,
`Inc. and Cricket
`Communications,
`Inc.
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`Status
`On-going;
`Claim
`construction
`hearing held
`March 23,
`2015.
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`2:14-CV-
`897-RSP
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`ED.
`Tex.
`
`AT&T Mobility
`LLC and AT&T
`Inc.
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`Scheduling
`Conf. held
`March 20,
`2015.
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`
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`3. 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
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`Status
`Joined with this proceeding
`IPR2014-01035
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`
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`5
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`Case IPR2014-001035
`Patent No. 5,659,891
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`
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`Dated: May 19, 2015
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`Dated: May 19, 2015
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`Joint Motion to Terminate Proceeding
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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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`
`
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`
`
`/ Pierre J. Hubert/
`Pierre J. Hubert (Reg. 45,826)
`Lead Counsel for T-Mobile
`McKool Smith, P.C.
`300 W. 6th Street, Suite 1700
`Austin, TX 78701
`Tel. 512-692-8700
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`6
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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 Proceeding Pursuant to 35 U.S.C. § 317 filed by the Mobile
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`Telecommunications Technologies, LLC on May 19, 2015 was duly served via
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`electronic mail upon 01048-21IP891@McKoolSmith.com - counsel of record for
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`T-Mobile USA, Inc. and T-Mobile US, Inc. (“Petitioner”).
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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: May 19, 2015
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