`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 IPR2017-00443
`Patent 6,470,399 B11
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`
`CHANG, 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 IPR2017-01682 has been joined with this proceeding.
`
`
`
`IPR2017-00443
`Patent 6,470,399 B1
`
`
`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. 6,470,399 B1 (“the ’399
`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. 2012.
`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
`the procedural posture of this proceeding and the facts before us, we
`
`2
`
`
`
`IPR2017-00443
`Patent 6,470,399 B1
`
`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 Petitioner ZTE
`(USA) Inc. (“ZTE”) 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 ZTE;
`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
`
`
`
`IPR2017-00443
`Patent 6,470,399 B1
`
`For PETITIONER:
`
`Dion Bregman
`Andrew Devkar
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`andrew.devkar@morganlewis.com
`
`Scott Miller
`Darren Franklin
`smiller@sheppardmullin.com
`dfranklin@sheppardmullin.com
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`
`For PATENT OWNER:
`
`Gregory s. Donahue
`Minghui Yang
`DiNOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
