EXHIBIT 2002
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`EXHIBIT 2002
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`EXHIBIT 2002
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Microsoft Corporation,
`Petitioner
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`v.
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
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`____________
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`Case IPR2016-01581
`Patent 5,754,946
`____________
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`PATENT OWNER’S EXPLANATION
`AS TO WHY TERMINATION IS APPROPRIATE
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`Case IPR2016-01581 Exhibit 2002 of Joint Motion to Terminate Proceeding
`Patent No. 5,754,946
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`Mobile Telecommunications Technologies, LLC (“Patent Owner”)
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`respectfully submits that this inter partes review proceeding should be terminated
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`with respect to the Patent Owner, because (1) Patent Owner and the only Petitioner
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`involved in the proceedings have filed a joint request to terminate this proceeding
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`as to Petitioner; (2) the proceeding is in its early stage, (3) the merits of the
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`Petition have not been determined, and (4) concluding these proceedings at this
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`early juncture promotes the Congressional goal to establish a more efficient and
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`streamlined patent system that, inter alia, limits unnecessary and
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`counterproductive litigation costs. See “Changes to Implement Inter Partes
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`Review Proceedings, Post-Grant Review Proceedings, and Transitional Program
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`for Covered Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p.
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`48680 (Tuesday, August 14, 2012). By permitting termination of review
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`proceedings as to all parties, upon settlement of their disputes, the United States
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`Patent and Trademark Office (“USPTO”) provides a measure of certainty as to the
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`outcome of such proceedings. This certainty helps foster an environment that
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`promotes settlements, creating a timely, cost-effective alternative to litigation. In
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`contrast, maintaining these proceedings in the absence of Petitioner would
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`effectively pit the Patent Owner against the USPTO, a scenario never intended by
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`the legislators that enacted the laws governing these proceedings.
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`1
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`Case IPR2016-01581 Exhibit 2002 of Joint Motion to Terminate Proceeding
`Patent No. 5,754,946
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`Consider that, under 35 U.S.C. § 317(a), termination as to the Petitioner is
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`mandatory upon joint request of the parties (which has been filed), and once that
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`termination is effected, there will be no counter-party in these proceedings. In
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`enacting the applicable law Congress did not intend in such circumstances that the
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`USPTO would step into the shoes of the Petitioner or assume an ex parte
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`examination role. Instead, the Leahy-Smith America Invents Act replaced inter
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`partes reexamination with review proceedings and entrusted such matters to the
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`Patent Trial and Appeal Board (“PTAB”) rather than the examining corps.
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`Commenting on these marked changes to USPTO practice, Senator Kyl noted that
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`the new procedures were intended to be strictly adjudicative in nature, where “the
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`petitioner, rather than the Office, bears the burden of showing unpatentability.”
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`157 Congressional Record S1375, daily ed. March 8, 2011. As these changes
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`were borrowed from the Senator’s prior bill from the 110th Congress, S. 3600, he
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`cited with approval his comments in support of that prior legislation:
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`“The bill uses an oppositional model, which is favored by
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`PTO as allowing speedier adjudication of claims. Under a
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`reexam system, the burden is always on PTO to show that a
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`claim is not patentable. Every time that new information is
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`presented, PTO must reassess whether its burden has been
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`2
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`Case IPR2016-01581 Exhibit 2002 of Joint Motion to Terminate Proceeding
`Patent No. 5,754,946
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`met. This model has proven unworkable in inter partes
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`reexam, in which multiple parties can present information to
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`PTO at various stages of the proceeding, and which system
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`has experienced interminable delays. Under an oppositional
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`system, by contrast, the burden is always on the petitioner to
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`show that a claim is not patentable. Both parties present their
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`evidence to the PTO, which then simply decides whether the
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`petitioner has met his burden.” 154 Congressional Record
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`S9987, daily ed. Sept. 27, 2008 (emphasis added).
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`Senator Kyl’s comments1 make clear that the new review proceedings were
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`not intended to devolve into the prior “unworkable” system of reexamination in
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`the event no petitioner was left. The PTAB’s role was intended to be that of an
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`1 Senator Kyl also explained that although section 316(a)(4) of the then-pending
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`Patent Reform Act of 2011, S.23, gave the USPTO discretion in prescribing
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`regulations governing the new proceeding, the USPTO had assured Congress that
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`it would “use this discretion to convert inter partes into an adjudicative
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`proceeding.” This change also was effectively compelled by section 316(e) of the
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`Act, which assigned to a petitioner the burden of proving a proposition of
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`unpatentability. 157 Congressional Record S1375, daily ed. March 8, 2011.
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`3
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`Case IPR2016-01581 Exhibit 2002 of Joint Motion to Terminate Proceeding
`Patent No. 5,754,946
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`adjudicator resolving a dispute between litigants, not an examiner. See, e.g.,
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`Statement of Sen. Kyl, 157 Congressional Record S1376, daily ed. March 8, 2011
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`(“Currently, inter partes reexaminations usually last for 3 to 5 years. Because of
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`procedural reforms made by the present bill to inter partes proceedings, the Patent
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`Office is confident that it will be able to complete these proceedings within one
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`year. Among the reforms that are expected to expedite these proceedings are the
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`shift from an examinational to an adjudicative model, and the elevated
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`threshold for instituting proceedings.”) (Emphasis added). In the face of a
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`negotiated settlement between the parties and the absence of any petitioner in the
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`proceedings, the Board’s role has been fully discharged and termination of the
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`proceedings is justified.
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`When the Rules of Practice for trials before the PTAB were adopted, the
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`USPTO noted that Section 42.74(a) affords the Board the opportunity to determine
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`patentability, notwithstanding any settlement between the parties. This rule was
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`said to be consistent with 35 U.S.C. 135(e), which provides that the Board is not
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`required to follow a settlement agreement in a derivation proceeding when it is
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`inconsistent with the evidence. 77 Fed. Reg. No. 157, p. 48625 (Tuesday, August
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`14, 2012). In the present case, the parties’ Settlement Agreement is not
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`inconsistent with any evidence.
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`4
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`Case IPR2016-01581 Exhibit 2002 of Joint Motion to Terminate Proceeding
`Patent No. 5,754,946
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`Moreover, because these proceedings are at such an early stage it is an open
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`question as to how they could continue in the absence of any petitioner. For
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`example, any future motions by Patent Owner would be unopposed. As Congress
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`intended that the Board act solely as an adjudicator, it is unclear how the Board
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`would, or even could, act on such matters. Proceeding to a final written decision
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`under 35 U.S.C. § 317(a) in such circumstances would, therefore, seem to present
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`many obstacles.
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`Should the Board decide to continue the present proceedings, the
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`Congressional goal of speedy dispute resolutions will be chilled. Faced with the
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`prospect of having to continue to defend a patent, not against a third party
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`petitioner but against the PTAB, patent owners would have little, if any, reason to
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`enter into compromises of the kind reached between the present parties. In such
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`circumstances, patent owners would still face the jeopardies and costs associated
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`with review proceedings but would be effectively prohibited from availing
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`themselves of the benefits (for example the cross-examination of witnesses upon
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`notice) of same.
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`5
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`Case IPR2016-01581 Exhibit 2002 of Joint Motion to Terminate Proceeding
`Patent No. 5,754,946
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`For at least the foregoing reasons, termination of these proceedings as to the
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`Patent Owner is respectfully requested.
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`Dated: January 3, 2017
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`Respectfully submitted,
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`/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
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`6
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