UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`
`
`v.
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`____________
`
`
`
`Case IPR2015-01724
`Patent 5,915,210
`____________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`
`
`v.
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`____________
`
`
`
`Case IPR2015-01724
`Patent 5,915,210
`____________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`Case IPR2015-01724
`Patent No. 5,915,210
`
`
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`Pursuant to 35 U.S.C. § 317(a), Samsung Electronics Co., Ltd. (“Samsung”
`
`or Petitioner) and Mobile Telecommunications Technologies, LLC (“Patent
`
`Owner”) (jointly, the “Parties”) jointly request termination of IPR2015-01724,
`
`which is directed to U.S. Patent No. 5,915,210 (the “’210 Patent”).
`
`On August 13, 2015, Samsung filed a Petition for Inter Partes Review
`
`(“Samsung IPR” – which is the above-captioned Inter Partes Review) before the
`
`United States Patent Trial and Appeal Board (“the Board”). Patent Owner’s
`
`preliminary response was filed on November 23, 2015.
`
`Patent Owner has not filed a response, and one is not due until May 18,
`
`2016. No final written decision on the merits of this inter partes review
`
`proceeding has been entered. The Parties have settled their dispute, and have
`
`reached agreement to terminate this inter partes review.
`
`Generally, the Board expects that a proceeding will terminate after the filing
`
`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77
`
`Fed.Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
`
`instant Motion in an email dated April 13, 2016. IPR2013-00428, Paper No. 56
`
`provides guidance as to the content of a motion to terminate. There, the Board
`
`indicates that a joint motion, such as this one, should (1) include a brief
`
`explanation as to why termination is appropriate; (2) identify all parties in any
`
`related litigation involving the patents at issue, and the status of each; and (3)
`
`1
`
`
`
`Case IPR2015-01724
`Patent No. 5,915,210
`
`identify any related proceedings currently before the Office. IPR2013-00428,
`
`Joint Motion to Terminate Proceeding
`
`
`
`
`
`Paper No. 56 at 2. This Motion satisfies each of the above requirements.
`
`Indeed, the Parties have entered into a Settlement Agreement, and a true
`
`copy of the same is attached hereto as Exhibit 2001, as required by 35 U.S.C. §
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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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`Agreement (Exhibit 2001) be maintained as business confidential information
`
`under 37 C.F.R. §42.74(c) and a separate joint request to that effect is being filed
`
`on even date herewith.
`
`1. Reasons Why Termination is Appropriate.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`
`chapter shall be terminated with respect to any petitioner upon the joint request of
`
`the petitioner and the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” With respect to Samsung,
`
`termination is appropriate because a final written decision has not been reached in
`
`this Review. Indeed, Patent Owner has not yet filed its Response, nor has
`
`Samsung filed responsive papers. Termination of this proceeding with respect to
`
`Samsung is further appropriate because, if this Motion is granted, Samsung will
`
`
`1 The Settlement Agreement is being filed electronically via the Patent Review
`
`Processing System (PRPS) as “Board Only.”
`
`2
`
`
`
`Case IPR2015-01724
`Patent No. 5,915,210
`
`not be participating as a party in this proceeding going forward. To this point, the
`
`Joint Motion to Terminate Proceeding
`
`
`
`
`
`Parties have settled their dispute and executed the earlier-referenced Settlement
`
`Agreement to terminate this proceeding as to Samsung, as well as the Parties’
`
`related district court litigation. The Parties agree that this district court litigation
`
`will be dismissed per the Parties’ Settlement Agreement. For all these reasons, the
`
`Parties respectfully request termination of this proceeding with respect to
`
`Samsung.
`
`Moreover, Petitioner, Samsung, does not oppose Patent Owner in seeking
`
`termination of this inter partes review proceeding altogether.
`
`Because § 317(a) indicates that the USPTO is not required to terminate an
`
`inter partes review when no petitioner remains in the proceeding, Patent Owner
`
`provides its own additional comments as to why termination with respect to Patent
`
`Owner is proper in Patent Owner’s Explanation as to Why Termination Is
`
`Appropriate, attached hereto as Exhibit 2002.
`
`2. All parties in any pending related litigation involving the patents at
`issue, and current status of each such related litigation.
`
`All parties involved in litigations related to the ’210 Patent are identified in
`
`
`
`the table that follows.
`
`3
`
`
`
`Case IPR2015-01724
`Patent No. 5,915,210
`
`
`Case Name
`Mobile
`Telecommunications
`Technologies, LLC v.
`Samsung Electronics
`Co., Ltd., et al.
`Mobile
`Telecommunications
`Technologies, LLC v.
`Time Warner Cable
`Inc., et al.
`
`Mobile
`Telecommunications
`Technologies, LLC v.
`Bright House Networks,
`LLC
`Mobile
`Telecommunications
`Technologies, LLC v.
`Charter
`Communications, Inc.
`Mobile
`Telecommunications
`Technologies, LLC v.
`Cox Communications,
`Inc.
`Mobile
`Telecommunications
`Technologies, LLC v.
`Aruba Networks,
`Inc., et al.
`Mobile
`Telecommunications
`Technologies, LLC v.
`
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`Case No. Court
`No. 2:13-
`E.D.
`cv-183
`TX.
`
`Defendants
`Samsung
`Electronics Co.,
`Ltd., et al.
`
`Status
`Pending
`awaiting trial
`
`No. 2:16-
`cv-007
`
`E.D.
`TX.
`
`No. 2:16-
`cv-008
`
`E.D.
`TX.
`
`Time Warner Cable
`Inc., Time Warner
`Cable Enterprises
`LLC, and Time
`Warner Cable Texas
`LLC
`Bright House Networks,
`LLC
`
`Pending
`awaiting trial
`
`Pending
`awaiting trial
`
`No. 2:16-
`cv-009
`
`E.D.
`TX.
`
`Charter
`Communications, Inc.
`
`Pending
`awaiting trial
`
`No. 2:16-
`cv-010
`
`E.D.
`TX.
`
`Cox Communications,
`Inc.
`
`Pending
`awaiting trial
`
`No. 2:16-
`cv-012
`
`E.D.
`TX.
`
`No. 2:16-
`cv-013
`
`E.D.
`TX.
`
`4
`
`Aruba Networks,
`Inc., Hewlett
`Packard Enterprise
`Company and HP
`Inc.
`Brocade
`Communications
`Systems, Inc.
`
`Pending
`awaiting trial
`
`Pending
`awaiting trial
`
`
`
`Case IPR2015-01724
`Patent No. 5,915,210
`
`
`Brocade
`Communications
`Systems, Inc.
`Mobile
`Telecommunications
`Technologies, LLC v.
`Juniper Networks, Inc.
`
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`No. 2:16-
`cv-014
`
`E.D.
`TX.
`
`Juniper Networks, Inc.
`
`Pending
`awaiting trial
`
`
`
`3. Related proceedings currently before the Office and Status.
`
`Aside from this inter partes review proceeding, the ’210 Patent is also the
`
`subject of the following proceeding(s) currently before the Office:
`
`Related
`Proceeding
`IPR2016-
`01725
`IPR2016-
`00765
`
`IPR2016-
`00769
`
`
`
`Requestor/Petitioner
`
`Samsung Telecommunications
`America, LLC
`ARRIS Group, Inc.
`
`Aruba Networks, Inc., Hewlett
`Packard Enterprise Company, and HP
`Inc.
`
`Status
`
`Not instituted
`
`Pending; motion for
`joinder with this
`proceeding filed
`Pending; motion for
`joinder with this
`proceeding filed
`
`5
`
`
`
`Case IPR2015-01724
`Patent No. 5,915,210
`
`
`
`Dated: April 14, 2016
`
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`
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`Dated: April 14, 2016
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`Joint Motion to Terminate Proceeding
`
`
`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
`
`
`
`
`
`
`
`/Heath J. Briggs/
`Heath J. Briggs (Reg. 54,919)
`Lead Counsel for Samsung
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 1.550(f), a copy of Joint Motion to
`
`Terminate Proceeding Pursuant to 35 U.S.C. § 317 filed by the Mobile
`
`Telecommunications Technologies, LLC on April 14, 2016 was duly served via
`
`electronic mail upon MtelGTIPR@gtlaw.com - counsel of record for Samsung
`
`Electronics Co., Ltd. (“Petitioner”).
`
`The parties have agreed to electronic service in this matter.
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`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: April 14, 2016
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