`Tel: 571.272.7822
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`Paper 12
`Entered: August 22, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HUAWEI DEVICE CO., LTD., LG ELECTRONICS, INC., and
`ZTE (USA) INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00443
`Patent 6,470,399 B1
`____________
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`
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`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
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`CHANG, Administrative Patent Judge.
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`DECISION
`Granting Joint Motion to Terminate as to Petitioner Huawei Device Co., Ltd.
`37 C.F.R. § 42.74
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`IPR2017-00443
`Patent 6,470,399 B1
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`Joint Petitioner, Huawei Device Co., Ltd. (“Huawei”), and Patent
`Owner, Papst Licensing GmbH & Co. KG (“Papst”), jointly move to
`terminate the instant inter partes review with respect to Huawei in light of
`the settlement between Huawei and Papst that resolves their dispute
`regarding U.S. Patent No. 6,470,399 B1 (“the ’399 patent”). Paper 10
`(“Mot.”). Huawei 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. 2005. Pursuant to 37 C.F.R.
`§ 42.74(c), the parties further filed a joint request to treat the Settlement
`Agreement as business confidential information kept separate from the file
`of the involved patent. Paper 11.
`For the reasons set forth below, the Joint Motion to Terminate with
`respect to Huawei, 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
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`IPR2017-00443
`Patent 6,470,399 B1
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`determine that the parties’ contentions have merit, and that it is appropriate
`to terminate this proceeding with respect Huawei. The proceeding, however,
`will not be terminated with respect to Papst, as other Petitioners—LG
`Electronics, Inc., and ZTE (USA) Inc.—remain in the proceeding.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate, with respect to
`Huawei, is granted;
`FURTHER ORDERED that this review is terminated with respect to
`Huawei only; but this review continues to proceed with Papst and the
`remaining Petitioners;
`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 Huawei in the caption.
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`IPR2017-00443
`Patent 6,470,399 B1
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`For PETITIONER:
`David Garr
`Gregory Discher
`dgarr@cov.com
`gdischer@cov.com
`COVINGTON & BURLING LLP
`
`Herbert Finn
`Jonathan Giroux
`finnh@gtlaw.com
`girouxj@gtlaw.com
`GREENBERG TRAURIG LLP
`
`Scott Miller
`Darren Franklin
`smiller@sheppardmullin.com
`dfranklin@sheppardmullin.com
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
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`For PATENT OWNER:
`Gregory s. Donahue
`Minghui Yang
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`DiNOVO PRICE ELLWANGER & HARDY LLP
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowski
`Arlen L. Olsen
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`SCHMEISER, OLSEN & WATTS, LLP
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