`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ZTE (USA) INC.1,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`____________________
`Case IPR2017-007142
`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
`
`
`1 ZTE Corporation was identified as a Real-Party-in-Interest in the Corrected
`Petition, but was not in fact, nor was it listed in the case caption as a Petitioner.
`However, the Decision on Institution (Paper 10) included ZTE Corporation in the
`caption as a Petitioner. ZTE USA is the only ZTE entity who is properly a
`petitioner, and ZTE USA requests that the record be corrected to reflect this fact.
`The remainder of this pleading will therefore refer to ZTE USA and includes all
`ZTE entities who are actually a Petitioner.
`2 Case IPR2017-01808 has been joined with this proceeding.
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s
`
`JOINT REQUEST IN IPR2017-00714
`U.S. PATENT NO. 6,470,399 B1
`
`
`
`
`authorization of January 9, 2018, Petitioner ZTE (USA) Inc. (“ZTE”) 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
`
`between the parties, as referenced in the parties’ Joint Motion to Terminate with
`
`Respect to ZTE 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
`
`
`
`
`
`JOINT REQUEST IN IPR2017-00714
`U.S. PATENT NO. 6,470,399 B1
`
`(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 contemporaneously with the
`
`Settlement Agreement, is timely and in accordance with the foregoing authority.
`
`Therefore, parties request that the Settlement Agreement (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 12, 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
`
`/Scott R. Miller/
`Scott R. Miller
`Registration No. 32,276
`Darren Franklin
`Registration No. 51,701
`
`3
`
`
`
`JOINT REQUEST IN IPR2017-00714
`U.S. PATENT NO. 6,470,399 B1
`
`SHEPPARD MULLIN RICHTER &
`HAMPTON, LLP
`333 South Hope Street, 43rd Floor
`Los Angeles, CA 90071
`(213) 620-1780
`
`Attorneys for Petitioner ZTE (USA) 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 12,
`
`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 12, 2018
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`/Nicholas T. Peters/
`Nicholas T. Peters
`Registration No. 53,456
`ntpete@fitcheven.com
`Lead Counsel for Patent Owner
`
`
`5
`
`
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