`Tel: 571.272.7822
`
`
`Paper 29
`Entered: January 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZTE (USA) INC., OLYMPUS CORPORATION, and
`OLYMPUS AMERICA INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-004151
`Patent 6,895,449 B2
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motion to Terminate as to
`Petitioner Olympus Corporation and Olympus America, Inc.
`37 C.F.R. § 42.74
`
`
`1 IPR2017-01617 has been joined with this proceeding.
`
`
`
`IPR2017-00415
`Patent 6,895,449 B2
`
`
`Petitioner, Olympus Corporation and Olympus America, Inc.
`(collectively “Olympus”), and Patent Owner, Papst Licensing GmbH & Co.
`KG (“Papst”), jointly move to terminate the instant inter partes review with
`respect to Olympus in light of the settlement between Olympus and Papst
`that resolves their dispute regarding U.S. Patent No. Patent 6,895,449 B2
`(“the ’449 patent”). Paper 27 (“Mot.”). Olympus and Papst also filed a true
`copy of their written settlement agreement in connection with the
`termination as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Ex.
`2011. Pursuant to 37 C.F.R. § 42.74(c), Olympus and Papst additionally
`filed a joint request to treat the Settlement Agreement as business
`confidential information kept separate from the file of the involved patent.
`Paper 28.
`For the reasons set forth below, the Joint Motion to Terminate with
`respect to Olympus and the Joint Request to File Settlement Agreement as
`Business Confidential Information are granted.
`Under the Leahy-Smith America Invents Act, settlement between the
`parties to a proceeding is encouraged. Notably, 35 U.S.C. § 317(a), in part,
`provides the following (emphasis added):
`(a) IN GENERAL.—An 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. If the inter partes review is
`terminated with respect to a petitioner under this section, no
`estoppel under section 315(e) shall attach to the petitioner, or to
`the real party in interest or privy of the petitioner, on the basis of
`that petitioner’s institution of that inter partes review.
`Here, although the instant inter partes review has been instituted, we
`have not entered a final written decision in this proceeding. Upon review of
`
`2
`
`
`
`IPR2017-00415
`Patent 6,895,449 B2
`
`the procedural posture of this proceeding and the facts before us, we
`determine that the parties’ contentions have merit, and that it is appropriate
`to terminate this proceeding with respect Olympus. The proceeding,
`however, will not be terminated with respect to Papst, as another Petitioner,
`ZTE (USA) Inc., remains in the proceeding.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate, with respect to
`Olympus, is granted;
`FURTHER ORDERED that this review is terminated with respect to
`Olympus only; but this review continues with Papst and the remaining
`Petitioner;
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information and to keep such
`settlement agreement separate from the patent file, and to make it available
`only to Federal Government agencies on written request, or to any person on
`a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), is granted; and
`FURTHER ORDERED that any subsequent papers filed in this inter
`partes review should not include Olympus in the caption.
`
`
`
`
`3
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`
`
`IPR2017-00415
`Patent 6,895,449 B2
`
`
`For PETITIONER:
`
`Dion Bregman
`Andrew Devkar
`MORGAN, LEWIS & BOCKIUSLLP
`dion.bregman@morganlewis.com
`andrew.devkar@morganlewis.com
`
`Herbert Finn
`Jonathan Giroux
`GREENBURG TRAURIG LLP
`finnh@gtlaw.com
`girouxj@gtlaw.com
`
`Scott Miller
`Darren Franklin
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`smiller@sheppardmullin.com
`dfranklin@sheppardmullin.com
`
`
`For PATENT OWNER:
`
`Gregory S. Donahue
`Minghui Yang
`DINOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`myang@dpelaw.com
`
`Anthony Meola
`Jason A. Murphy
`Victor J. Baranowski
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`ameola@iplawusa.com
`jmurphy@iplawusa.com
`vbaranowski@iplawusa.com
`aolen@iplawusa.com
`
`4
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