`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Huawei Device Co., Ltd., LG Electronics, Inc., and ZTE (USA) Inc.
`
`Petitioners,
`
`v.
`
`Papst Licensing GmbH & Co. KG
`
`Patent Owner.
`
`Case No. IPR2017-00443
`Patent No. 6,470,399 B1
`
`
`
`
`
`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION AND TO MAINTAIN
`SAID AGREEMENT SEPARATE FROM THE PUBLIC FILE PURSUANT
`TO 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`IPR2017-00443
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s
`
`authorization of August 14, 2017, Petitioner Huawei Device Co., Ltd. and Patent
`
`Owner Papst Licensing GmbH & Co. KG jointly request to treat as business
`
`confidential information the true and complete copy of the Settlement Agreement
`
`(Confidential Exhibit 2005) between the parties, as referenced in the parties’ Joint
`
`Motion to Terminate with Respect to Huawei Device Co., Ltd. Pursuant to 35
`
`U.S.C. § 317 and 37 C.F.R. § 42.74, filed concurrently herewith.
`
`35 U.S.C. § 317(b) provides that:
`
`At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential information,
`shall be kept separate from the file of the involved patents, and shall
`be made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause.
`
`Likewise, 37 C.F.R. § 42.74(c) provides that:
`
`A party to a settlement may request that the settlement be treated as
`business confidential information and be kept separate from the files
`of an involved patent or application. The request must be filed with
`the settlement. If a timely request is filed, the settlement shall only be
`available:
`
`(1) To a Government agency on written request to the Board; or
`
`
`
`
`
`
`
`IPR2017-00443
`
`(2) To any other person upon written request to the Board to make the
`settlement agreement available, along with the fee specified in
`§ 42.15(d) and on a showing of good cause.
`
`The present request, which is being filed contemparaneously with the
`
`Settlement Agreement, is timely and in accordance with the foregoing authority.
`
`Therefore, parties request that the Settlement Agreement (Confidential Exhibit
`
`2005) (i) be treated as business confidential information, (ii) be maintained
`
`separate from the publicly available file of the involved patent, and (iii) shall be
`
`made available only to Federal Government agencies on written request, or to
`
`persons showing good cause on written request, pursuant to 35 U.S.C. § 317(b) and
`
`37 C.F.R. § 42.74(c).
`
`
`
`Date: August 21, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By /s/ David A. Garr
`
`David A. Garr
`Registration No. 74,932
`Gregory S. Discher
`Registration No. 42,488
`COVINGTON & BURLING LLP
`One City Center
`850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`
`Attorneys for Petitioner Huawei Device
`
`
`
`IPR2017-00443
`
`Co., Ltd.
`
`By /s/ Gregory S. Donahue
`
`Gregory S. Donahue
`Registration No. 47,531
`DiNovo Price Ellwanger LLP
`7000 North MoPac Expressway
`Suite 350
`Austin, TX 78731
`(512) 539-2626
`
`Anthony L. Meola
`Registration No. 44,936
`Schmeiser, Olsen & Watts, LLP
`2500 Westchester Avenue, Suite 210
`Purchase, NY 10577
`(914) 825-1039
`
`Jason A. Murphy
`Registration No. 63,423
`Victor J. Baranowski
`Registration No. 64,998
`Arlen L. Olsen
`Registration No. 37,543
`Schmeiser, Olsen & Watts, LLP
`22 Century Hill Drive, Suite 302
`Latham, NY 12110
`(518) 220-1850
`
`Attorneys for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`