`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ZTE (USA) INC., ZTE CORPORATION,
`OLYMPUS CORPORATION; OLYMPUS AMERICA INC.,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`____________________
`Case IPR2017-007141
`Patent 6,470,399
`____________________
`
`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)
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s
`
`authorization of January 3, 2018, Petitioners Olympus Corporation and Olympus
`
`America Inc. and Patent Owner Papst Licensing GmbH & Co. KG jointly request to
`
`
`1 Case IPR2017-01808 has been joined with this proceeding.
`
`
`
`
`
`
`treat as business confidential information the true and complete copy of the
`
`JOINT REQUEST IN IPR2017-00714
`U.S. PATENT NO. 6,470,399 B1
`
`Settlement Agreement (Confidential Exhibit 2007) between the parties, as
`
`referenced in the parties’ Joint Motion to Terminate with Respect to Olympus
`
`Corporation and Olympus America, Inc. 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
`
`(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.
`
`2
`
`
`
`
`
`The present request, which is being filed contemporaneously with the
`
`JOINT REQUEST IN IPR2017-00714
`U.S. PATENT NO. 6,470,399 B1
`
`Settlement Agreement, is timely and in accordance with the foregoing authority.
`
`Therefore, parties request that the Settlement Agreement (Confidential Exhibit
`
`2007) (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).
`
`
`
`
`
`
`
`
`
`Dated: January 3, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Nicholas T. Peters/
`Nicholas T. Peters
`Registration No. 53,456
`Paul B. Henkelmann
`Registration No. 65,891
`FITCH, EVEN TABIN & FLANNERY,
`LLP
`120 S. LaSalle Street, Suite 1600
`Chicago, IL 60603
`
`Counsel for Patent Owner Papst Licensing
`GmbH & Co. KG
`
`/Dion M. Bregman/
`Dion M. Bregman
`Registration No. 45,645
`dion.bregman@morganlewis.com
`MORGAN LEWIS & BOCKIUS, LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`(650) 843-7519
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JOINT REQUEST IN IPR2017-00714
`U.S. PATENT NO. 6,470,399 B1
`
`Counsel for Petitioners Olympus
`Corporation and Olympus America Inc.
`
`4
`
`
`
`
`
`JOINT REQUEST IN IPR2017-00714
`U.S. PATENT NO. 6,470,399 B1
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 3,
`
`2018, a complete and entire copy of the foregoing paper has been served in its
`
`entirety by e-mail on counsel for Petitioners. Petitioners have agreed to electronic
`
`service.
`
`Dated: January 3, 2018
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`/Nicholas T. Peters/
`Nicholas T. Peters
`Registration No. 53,456
`ntpete@fitcheven.com
`Lead Counsel for Patent Owner
`
`
`5
`
`