`571-272-7822
`
`
`
`
`Paper 26
`Entered: November 2, 2017
`
`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.
`____________
`
`Case IPR2016-014931
`Patent 8,457,676 B2
`____________
`
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Joint Motion to Terminate with Respect to Apple Inc.
`37 C.F.R. § 42.72
`
`
`
`
`
`
`
`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.
`
`
`
`IPR2016-01493
`Patent 8,457,676 B2
`
`
`INTRODUCTION
`On February 13, 2017, we instituted an inter partes review in this
`proceeding. A final hearing will be held on November 8, 2017. See
`Scheduling Order, Paper 8. The Board has not yet issued a Final Written
`Decision. On October 9, 2017, Petitioner Apple Inc. (“Apple”) and Patent
`Owner Cellular Communications Equipment LLC (“CCE”) filed a joint
`motion to terminate this proceeding as to Apple under 35 U.S.C. § 317 and
`37 C.F.R. § 42.74 (Paper 21), a true copy of the written settlement
`agreement (Ex. 1022), and a joint request to maintain confidentiality and to
`keep separate pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`(Paper 22).
`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.” The
`grant of the motion to terminate will not result in the termination of the
`instant proceeding, because HTC Corporation, HTC America, Inc., ZTE
`Corporation, and ZTE (USA), Inc. remain as Petitioners. The parties are
`reminded that the Board is not a party to the settlements, and may identify
`independently any question of patentability. 37 C.F.R § 42.74(a).
`Generally, however, the Board expects that a proceeding will
`terminate as to settling parties 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 is persuaded that, under these circumstances, it
`is appropriate to terminate this proceeding only as to Apple. See 37 C.F.R.
`§ 42.72.
`
`2
`
`
`
`
`
`IPR2016-01493
`Patent 8,457,676 B2
`
`
`Given that Apple has been terminated from this IPR, Petitioners HTC
`Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA), Inc.
`shall take over an active role in these proceedings. Petitioners HTC
`Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA), Inc.
`shall file all papers as single joint filings. Additionally, Petitioners HTC
`Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA) in this
`joined proceeding shall designate attorney(s) to present argument at the oral
`hearing in the joined proceeding, if scheduled, in a consolidated argument.
`
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the joint motion to terminate this proceeding with
`respect to Apple is GRANTED, and this proceeding is hereby terminated
`only as to Apple;
`FURTHER ORDERED that the parties’ joint request that the written
`settlement agreement (Ex. 1022) be: (i) treated as business confidential
`information; (ii) kept separate from the file of U.S. Patent No. 8,457,676
`B2; (iii) kept confidential from any third party (including from the non-
`settling Petitioners); and (iv) made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause,
`under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
`GRANTED;
`FURTHER ORDERED Petitioners HTC Corporation, HTC America,
`Inc., ZTE Corporation, and ZTE (USA), Inc. shall take over an active role in
`these proceedings and shall file all papers as joint filings; and
`3
`
`
`
`
`
`IPR2016-01493
`Patent 8,457,676 B2
`
`
`FURTHER ORDERED Petitioners HTC Corporation, HTC America,
`Inc., ZTE Corporation, and ZTE (USA) in this joined proceeding shall
`designate attorney(s) to present argument at the oral hearing in the joined
`proceeding in a consolidated argument.
`
`
`
`
`
`4
`
`
`
`
`
`IPR2016-01493
`Patent 8,457,676 B2
`
`PETITIONER APPLE INC.:
`Andrew S. Ehmke
`Scott T. Jarratt
`Clint S. Wilkins
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`scott.jarratt.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`
`
`PETITIONERS HTC CORPORATION, HTC AMERICA, INC.,
`ZTE CORPORATION, AND ZTE (USA), INC.:
`
`Steven A. Moore
`Brian Nash
`Rene Mai
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`steve.moore@pillsburylaw.com
`brian.nash@pillsburylaw.com
`rene.mai@pillsburylaw.com
`
`
`
`PATENT OWNER:
`
`Terry A. Saad
`Nicholas C. Kliewer
`BRAGALONE CONROY PC
`tsaad@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
`5
`
`
`
`
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