UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
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`v.
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`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2015-01708
`Patent 7,525,484
`__________________
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`JOINT MOTION TO LIMIT PETITION UNDER 37 C.F.R. § 42.71
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`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2015-01708
`Patent 7,525,484
`__________________
`
`JOINT MOTION TO LIMIT PETITION UNDER 37 C.F.R. § 42.71
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`I.
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`Statement of the Precise Relief Requested.
`Pursuant to 37 C.F.R. § 42.71 and an email authorizing this motion,1
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`Petitioners T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication Systems,
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`Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson (collectively
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`“Petitioners”) and Patent Owner TracBeam, LLC (“Patent Owner”) jointly request
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`that the Board limit this Petition for Inter Partes Review of U.S. Patent No.
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`7,525,484 (“the ‘484 patent”) to claims 1, 25, and 51. Accordingly, the parties
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`respectfully request that the Board remove claims 2, 6, 24, 71, and 72 of the ‘484
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`patent from this proceeding.
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`II. Statement of Facts.
`Petitioners filed this Petition for Inter Partes Review on August 11, 2015,
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`
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`requesting review of claims 1, 2, 6, 24, 25, 51, 71, and 72 of the ‘484 patent.
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`Patent Owner recently filed its Preliminary Response on November 16, 2015.
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`This proceeding is still in its preliminary stages. The Board has yet to
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`decide whether to institute a trial.
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`1 Email from Maria Vignone, Paralegal Operations Manager, Patent Trial
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`and Appeal Board, to Sean Luner and others, respective counsel for Patent Owner
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`and Petitioners (November 17, 2015).
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` 1
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`The T-Mobile Petitioners and Patent Owner are parties in a litigation
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`involving the ‘484 patent in the United States District Court for the Eastern District
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`of Texas, TracBeam, LLC v. T-Mobile US, Inc. et al., Case No. 6:14-cv-00678.2
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`On November 16, 2015, all Petitioners and Patent Owner executed a
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`Narrowing Agreement, in which they agreed to limit the issues in dispute in both
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`the District Court litigation and in multiple Inter Partes Reviews, by, among other
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`things, agreeing to file this Motion to remove claims 2, 6, 24, 71, and 72 from this
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`proceeding.
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`Concurrent with this Joint Motion to Limit the Petition in this proceeding,
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`pursuant to the Narrowing Agreement, the Petitioners and Patent Owner are also
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`filing:
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`(a) Joint Motions to Terminate in the following proceedings:
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`• IPR2015-01682;
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`• IPR2015-01684;
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`2 The District Court litigation also involves U.S. Patent Nos. 7,764,231,
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`7,298,327, and 8,032,153. Petitioners filed Petitions for Inter Partes Review
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`concerning each of these patents. See IPR2015-01681, IPR2015-01682, IPR2015-
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`01684, IPR2015-01686, IPR2015-01687, IPR2015-01709, IPR2015-01711,
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`IPR2015-01712, and IPR2015-01713.
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`• IPR2015-01686; and
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`• IPR2015-01709;
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`(b) Joint Motions to Limit Petition in the following proceedings:
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`• IPR2015-01681 limited to claims 25 and 82;
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`• IPR2015-01687 limited to claims 17, 20, and 25;
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`• IPR2015-01711 limited to claim 27;
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`• IPR2015-01712 limited to claims 1, 2, 44, and 60; and
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`• IPR2015-01713 limited to claims 1, 3, and 15.
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`
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`III. Argument.
`A. Limiting the Petition is Appropriate.
`The parties respectfully submit that the Board should limit the Petition in
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`this proceeding to claims 1, 25, and 51 of the ‘484 patent for the following reasons.
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`First, the parties are filing this joint motion early in this proceeding, just
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`days after Patent Owner filed its Preliminary Response and well before the Board
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`will decide whether to institute trial. See Netflix, Inc. v. Copy Protection LLC,
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`IPR2015-00921, Paper 14 at 2 (June 5, 2015) (“this proceeding is still in its
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`preliminary stages, and a decision has not been made yet whether to institute
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`trial”); Fresenuius-Kabi USA LLC v. Cubist Pharmaceuticals, Inc., IPR2015-
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`00223, Paper 28 at 2-3 (September 18, 2015) (the proceedings “are still in their
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`preliminary stages.”).
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`Second, because the merits of the petition have not been determined,
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`reducing the number of claims at this early juncture allows both the District Court
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`litigation and these proceedings to be conducted more efficiently and less
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`expensively, consistent with 37 C.F.R. § 42.1(b) (the PTAB rules should be
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`“construed to secure the just, speedy, and inexpensive resolution of every
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`proceedings”); see Fresenuius-Kabi USA LLC v. Cubist Pharmaceuticals, Inc.,
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`IPR2015-00223, Paper 28 at 2 (“The narrowing of issues at this preliminary stage
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`of the proceedings would serve to both conserve judicial resources and facilitate
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`the Board’s goal of resolving inter partes reviews in a just, speedy, and
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`inexpensive manner.”); Netflix, Inc. v. Copy Protection LLC, IPR2015-00921,
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`Paper 14 at 2 (June 5, 2015) (“limiting the proceedings facilitates the board’s goal
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`of resolving inter partes reviews in a just, speedy, and inexpensive manner.”
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`(citing 37 C.F.R. § 42.1(b)).
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`Third, the parties agreed to limit this petition in connection with a broader
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`agreement to narrow the disputed issues in several co-pending proceedings,
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`including multiple Inter Partes Reviews and the District Court litigation.
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`Fourth, under the Narrowing Agreement, Petitioners agreed that they will
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`not participate in challenging the claims that the parties seek to remove from this
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` 4
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`proceeding if this Motion to Limit Petition is not granted and the proceeding is
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`instituted.
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`The Board has consistently granted Motions to Limit Petitions under these
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`circumstances, see, e.g.:
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`• Fresenuius-Kabi USA LLC v. Cubist Pharmaceuticals, Inc., IPR2015-
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`00223, Paper 28 (September 18, 2015);
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`• Netflix, Inc. v. Copy Protection LLC, IPR2015-00921, Paper 14 (June
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`5, 2015);
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`• Fresenius Kabi USA LLC v. Cubist Pharmaceuticals, Inc., IPR2015-
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`01566, Paper 15 (September 15, 2015);
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`• AAB, Inc. v. ROY-G-BIV Corporation, IPR2013-00282, Paper 11
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`(June 10, 2013);
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`• Aker Marine AS v. Neptune Technologies and Bioresources, Inc.,
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`IPR2014-00003, Paper 21 (February 3, 2014).
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`B. A Copy of the Narrowing Agreement is Provided.
`The Narrowing Agreement has been executed in writing. A true copy is
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`filed along with this Motion, as business confidential information pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74, as Exhibit 2003.
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`A Joint Request to File an Agreement as Business Confidential Information
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`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 is also being filed along with this
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`Motion.
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`Summary.
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`C.
`For the foregoing reasons, Petitioners and Patent Owner respectfully request
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`that the Board limit the Petition in this proceeding to claims 1, 25, and 51, and
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`remove claims 2, 6, 24, 71, and 72 from consideration.
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`By:
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`Respectfully submitted,
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`
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`/Sean Luner/
`Sean Luner,
`Registration No. 36,588
`DOVEL & LUNER, LLP
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
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`Date: November 24, 2015
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`/s/ Bryan W. Oaks (with permission)
`Brian W. Oaks
`Reg. No. 44,981
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`BAKER BOTTS LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Phone: (512) 322-5470
`Fax: (512) 322-
`3621 brian.oaks@bakerbotts.com
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`Counsel for Petitioners
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` 7
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`Certificate of Filing and Service
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`I hereby certify that a true and correct copy of the foregoing JOINT
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`MOTION TO LIMIT PETITION UNDER 37 C.F.R. § 42.71 is being filed via
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`PRPS and served by electronic mail this 24th day of November, 2015 on counsel
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`for Petitioners as follows:
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`Brian W. Oaks
`BAKER BOTTS, LLP,
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Telephone (512) 322-5470
`Facsimile (512) 322-3621
`brian.oaks@bakerbotts.com
`
`Douglas M. Kubehl
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6486
`Facsimile (214) 661-4486
`doug.kubehl@bakerbotts.com
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`Chad C. Walters
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6511
`Facsimile (214) 661-4511
`chad.walters@bakerbotts.com
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`
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`Ross G. Culpepper
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6543
` 8
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`Facsimile (214) 661-4543
`ross.culpepper@bakerbotts.com
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`/Sean Luner/
`Sean Luner,
`Registration No. 36,588
`DOVEL & LUNER, LLP
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
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`
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`Date: November 24, 2015
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` 9
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