`Tel: 571.272.7822
`
`Paper 32
`Entered: January 9, 2018
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`ZTE (USA) 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.
`
`
`
`JUDGMENT
`Termination of Proceeding
`37 C.F.R. § 42.73
`
`
`1 IPR2017-01682 has been joined with this proceeding.
`
`
`
`IPR2017-00443
`Patent 6,470,399 B1
`
`
`Petitioner, ZTE (USA) Inc. (“ZTE”), and Patent Owner, Papst
`
`Licensing GmbH & Co. KG (“Papst”), jointly move to terminate the instant
`
`inter partes review in light of their settlement that resolves their dispute
`
`regarding U.S. Patent No. 6,470,399 B1 (“the ’399 patent”). Paper 30
`
`(“Mot.”). The parties 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. 2013. Pursuant to 37 C.F.R.
`
`§ 42.74(c), the parties additionally filed a joint request to treat the Settlement
`
`Agreement as business confidential information kept separate from the file
`
`of the involved patent. Paper 31.
`
`For the reasons set forth below, the Joint Motion to Terminate this
`
`proceeding 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.
`
`Generally, the Board expects that a proceeding will terminate after the
`
`filing of a settlement agreement. See Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Here, the parties indicates that
`
`their Settlement Agreement completely resolves the controversy between the
`
`2
`
`
`
`IPR2017-00443
`Patent 6,470,399 B1
`
`parties relating to the involved patent and that, on December 29, 2017, the
`
`parties filed a joint motion to dismiss in the related district court
`
`proceedings.2 Mot. 2−3. Although the instant inter partes review has been
`
`instituted, the proceeding is still in the briefing stage. We have not yet held
`
`an oral hearing and 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 determine that the parties’ requests have merit, and that it is
`
`appropriate to terminate this proceeding.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Joint Motion to Terminate is granted;
`
`FURTHER ORDERED that the instant inter partes review is
`
`terminated as to all parties including ZTE and Papst; and
`
`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.
`
`
`
`
`
`
`
`
`2 Papst Licensing GmbH & Co. KG v. Apple Inc., No. 6:15-cv-1095-RWS
`(E.D. Tex) and the consolidated case Papst Licensing GmbH & Co. KG v.
`ZTE Corporation and ZTE (USA), Inc., No. 6:15-cv- 1100-RWS (E.D.
`Tex.).
`
`3
`
`
`
`IPR2017-00443
`Patent 6,470,399 B1
`
`For PETITIONER:
`
`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
`
`