`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC.,
`ZTE CORPORATION, AND ZTE (USA), INC.,
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner
`
`________________
`
`IPR2016-014931
`Patent 8,457,676 B2
`________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`WITH RESPECT TO PETITIONER APPLE INC.
`
`
`
`
`
`
`
`
`
`1 HTC Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA), Inc.
`filed a petition in (now terminated) IPR2017-01081, and have been joined to the
`instant proceeding.
`
`
`
`
`
`Joint Motion to Terminate Proceeding
`With Respect to Petitioner Apple Inc.
`
`
`
`
`
`IPR2016-01493
` U.S. Patent No. 8,457,676
`
`
`
`I.
`
`Introduction
`
`Petitioner Apple Inc. (“Apple”) and Patent Owner Cellular Communications
`
`Equipment LLC (“CCE”) have entered into an agreement, effective September 1,
`
`2017, that resolves all underlying disputes between the parties, including the
`
`above-captioned inter partes review of U.S. Patent No. 8,457,676 (“the ’676
`
`patent”), Case No. IPR2016-01493 (the “Review”). Accordingly, pursuant to 35
`
`U.S.C. § 317, 37 C.F.R. § 42.74, and the Board’s authorization of October 5, 2017,
`
`the parties jointly move to terminate this Review.
`
`II. Statement of Facts
`
`Apple and CCE have entered into a written Settlement and License
`
`Agreement (the “Agreement”) that has settled their dispute. As a result of the
`
`Agreement, CCE’s claims against Apple in the following related lawsuits have
`
`been dismissed with prejudice or are in the process being dismissed with prejudice:
`
` Cellular Communications Equipment LLC v. AT&T Inc., et al., 2:15-cv-
`00576 (E.D. Tex. 2015);
` Cellular Communications Equipment LLC v. Sprint Solutions, Inc., et al.,
`2:15-cv-00579 (E.D. Tex. 2015);
` Cellular Communications Equipment LLC v. T-Mobile USA, Inc., et al.,
`2:15-cv-00580 (E.D. Tex. 2015);
` Cellular Communications Equipment LLC v. Cellco Partnership D/B/A
`Verizon Wireless, et al., 2:15-cv-00581 (E.D. Tex. 2015);
` Cellular Communications Equipment LLC v. Apple Inc., et al., 6:14-cv-
`00251 (E.D. Tex. 2015);
`
`
`
`1
`
`
`
`Joint Motion to Terminate Proceeding
`With Respect to Petitioner Apple Inc.
`
`
`
`
`
`IPR2016-01493
` U.S. Patent No. 8,457,676
`
`
` Cellular Communications Equipment LLC v. Apple Inc., et al., 6:17-cv-
`00146 (E.D. Tex. 2015);
` Cellular Communications Equipment LLC v. Apple Inc., et al., 6:17-cv-
`00225 (E.D. Tex. 2015); and
` Cellular Communications Equipment GmbH v. Apple Inc., et al. in the
`Dusseldorf Regional Court, Cases No. 4b O 143/15, 4b O 35/17 and 4b O
`36/17.
`
`The parties have also agreed to jointly request termination of the present
`
`inter partes review (case no. IPR2016-01493) filed by Apple against the ’676
`
`patent, as well as inter partes reviews IPR2016-01480 and IPR2016-01500,
`
`respectively filed by Apple against U.S. Patents Nos. 8,867,472 and 8,457,022.
`
`A true and correct copy of the Agreement is filed separately and
`
`concurrently with this motion as Exhibit APPL-1022, along with a request to treat
`
`the Agreement as business confidential information under 37 C.F.R. § 42.74(c).
`
`Exhibit APPL-1022 is being filed electronically as “Board Only.” For the sake of
`
`completeness, Exhibit APPL-1022 also includes a copy of a Settlement, Covenant,
`
`and Related Rights Agreement between Apple and CCE’s parent corporation,
`
`Acacia Research Corporation (“Acacia”), which was signed contemporaneously
`
`with the Agreement between Apple and CCE. There are no other agreements, oral
`
`or written, between the parties made in connection with, or in contemplation of, the
`
`termination of this proceeding.
`
`
`
`
`2
`
`
`
`Joint Motion to Terminate Proceeding
`With Respect to Petitioner Apple Inc.
`
`
`
`
`
`IPR2016-01493
` U.S. Patent No. 8,457,676
`
`
`Joinder petitioners HTC Corporation, HTC America, Inc., ZTE Corporation,
`
`and ZTE (USA), Inc. are not parties to the Agreement between Apple and CCE. In
`
`that regard, the ’676 patent is presently asserted in civil actions involving the
`
`joinder petitioners styled Cellular Communications Equipment LLC v. HTC
`
`Corporation, et al., 2:17-cv-00078 (E.D. Tex. 2017) and Cellular Communications
`
`Equipment LLC v. ZTE Corporation, et al., 2:17-cv-00079 (E.D. Tex. 2017).
`
`III. Relief Requested
`
`Termination of this inter partes review with respect to Petitioner Apple is
`
`requested, and the parties respectfully submit that such termination is appropriate.
`
`The relevant statutory provision on settlement provides that an inter partes review
`
`“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.” 35 U.S.C. § 317(a). Here,
`
`the Board has not yet decided the merits of the present inter partes review
`
`proceeding, and so under 35 U.S.C. § 317(a) the proceeding should be terminated
`
`with respect to Petitioner Apple upon this joint request.
`
`This proceeding is at a sufficiently early stage. For example, the oral hearing
`
`has not yet occurred. The Board has not yet invested significant resources and no
`
`motions or actions are outstanding. Further, no public interest factors militate
`
`
`
`
`3
`
`
`
`Joint Motion to Terminate Proceeding
`With Respect to Petitioner Apple Inc.
`
`
`
`
`
`IPR2016-01493
` U.S. Patent No. 8,457,676
`
`
`against termination of this proceeding with respect to Petitioner Apple in light of
`
`the circumstances of this proceeding.
`
`Additionally, termination of this proceeding as to Apple would further the
`
`underlying purpose of inter partes review, which is to provide an efficient and less
`
`costly alternative forum for patent disputes. Maintaining the proceeding as to
`
`Apple, however, would discourage further settlements, as patent owners in similar
`
`situations would have a strong disincentive to settle if they perceived that an inter
`
`partes review would continue with respect to a petitioner that has settled. Indeed,
`
`the Board has stated an expectation that proceedings such as these will be
`
`terminated after the filing of a settlement agreement: “[t]here are strong public
`
`policy reasons to favor settlement between the parties to a proceeding. … The
`
`Board expects that a proceeding will terminate after the filing of a settlement
`
`agreement, unless the Board has already decided the merits of the proceeding. 35
`
`U.S.C. 317(a), as amended….” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012).
`
`For at least these reasons, termination of this proceeding with respect to
`
`Petitioner Apple is warranted.
`
`
`
`
`
`
`
`
`4
`
`
`
`Joint Motion to Terminate Proceeding
`With Respect to Petitioner Apple Inc.
`
`
`
`
`
`IPR2016-01493
` U.S. Patent No. 8,457,676
`
`IV. Conclusion
`
`
`For the foregoing reasons, Petitioner Apple and Patent Owner CCE jointly
`
`
`
`and respectfully request that the Board terminate this Review with respect to
`
`Apple.
`
`
`
`
`
`
`
`
`
`Dated: October 9, 2017
`
`
`
`
`
`
`
`
`Dated: October 5, 2017
`
`
`Respectfully submitted,
`
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Reg. No. 50,271
`Haynes and Boone, LLP
`
`
`Respectfully submitted,
`
`
`
`Terry A. Saad (Reg. No. 62,492)
`Attorney for Patent Owner
`Bragalone Conroy PC
`
`
`
`
`5
`
`
`
`Joint Motion to Terminate Proceeding
`With Respect to Petitioner Apple Inc.
`
`
`
`
`
`IPR2016-01493
` U.S. Patent No. 8,457,676
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service October 9, 2017
`
`Manner of service Electronic Mail
`
`Documents served Joint Motion to Terminate Proceeding
`
`
`Exhibit APPL-1022
`
`Joint Request To Treat Agreement As Business
`Confidential Information Under 35 U.S.C. §
`317(b) and 37 C.F.R. § 42.74(c)
`
`
`Terry A. Saad (tsaad@bcpc-law.com)
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Telephone: 214.785.6673
`Facsimile: 214.786.6680
`
`
` /Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Reg. No. 50,271
`
`Persons served
`
`
`
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`
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