Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 53
`Entered: May 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`and
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IPR LICENSING, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-005251
`Patent 8,380,244 B2
`____________
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`DECISION
`Joint Motion to Terminate
`35 U.S.C. § 317 and 37 C.F.R. § 42.71
`
`
`
`1 Case IPR2015-00074 has been joined with this proceeding.
`
`

`

`IPR2014-00525
`Patent 8,380,244 B2
`
`I. INTRODUCTION
`On May 17, 2017, Microsoft and Patent Owner (collectively referred
`to as “the parties”), filed this joint motion to terminate Microsoft’s
`participation in this proceeding2 pursuant to a settlement agreement.3 Paper
`50. The parties also filed a true copy of their written settlement agreement,
`made in connection with the termination of Microsoft as a party from this
`proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.72.
`Ex. 2025. Additionally, the parties submitted a joint request to have their
`settlement agreement treated as confidential business information under
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 52.
`The parties submit that termination as to Microsoft is appropriate
`because the parties have settled their dispute relating to U.S. Patent No.
`8,380,244, and have reached agreement to terminate Microsoft’s
`participation in this proceeding. Paper 50, 1. The parties represent that this
`settlement agreement ends all disputes between the parties related to this
`patent, including the pending district court lawsuit. Id. at 2.
`The Parties are reminded that the Board is not a party to the
`settlement, and may identify independently any question of patentability.
`
`2 IPR Licensing, Inc. (“Patent Owner”) appealed our Final Written Decision
`ascertaining that claims 1–8, 14–16, 19–29, 36–38, and 41–44 of the
`8,320,244 patent are obvious to the U.S. Court of Appeal for the Federal
`Circuit. Paper 49. On April 20, 2017, the Federal Circuit affirmed our
`determination with respect to claims 1–7, 14–16, 19–29, 36–38, and 41–44,
`but vacated the determination of unpatentability of claim 8 and remanded for
`further proceedings. IPR Licensing, INC. v. ZTE Corporation, Case Nos.
`2016-1734, 2016-1443, 2017 WL 1406501 (Fed. Cir. April 20, 2017).
`3 Petitioners ZTE Corporation and ZTE (USA) Inc. are not parties to this
`settlement agreement, nor do they oppose termination as to Petitioner
`Microsoft. Paper 50, 1.
`
`
`
`
`2
`
`

`

`IPR2014-00525
`Patent 8,380,244 B2
`
`37 C.F.R. § 42.74(a). Generally, however, the Board expects that a
`proceeding will terminate with respect to a requesting petitioner after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
`Under the circumstances, based on the record before us, we determine
`that it is appropriate to terminate this proceeding with respect to Microsoft.
`
`
`ORDER
`In consideration of the foregoing, it is
`
`ORDERED that the parties’ joint request that the settlement
`
`agreement (Exhibit 2025) be treated as business confidential information
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), to be kept separate from
`the patent file, is GRANTED;
`
`FURTHER ORDERED that the joint motion to terminate the
`proceeding with respect to Microsoft is GRANTED;
`FURTHER ORDERED that Microsoft, as a petitioner, and the joinder
`of Case IPR2015-00074 with this proceeding, shall no longer be listed on the
`caption page; and
`
`FURTHER ORDERED that this proceeding is TERMINATED with
`respect to Microsoft, but not as to remaining petitioners ZTE Corporation
`and ZTE (USA) Inc.
`
`
`
`
`
`
`
`
`
`3
`
`

`

`IPR2014-00525
`Patent 8,380,244 B2
`
`PETITIONER:
`Charles M. McMahon
`Brian A. Jones
`BRINKS GILSON & LIONE
`cmcmahon@brinksgilson.com
`bjones@brinksgilson.com
`
`
`PATENT OWNER:
`
`Jonathan D. Link
`Julie M. Holloway
`LATHAM & WATKINS LLP
`jonathan.link@lw.com
`julie.holloway@lw.com
`
`
`
`
`
`
`4
`
`