`Tel: 571.272.7822
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`
`Paper 28
`Entered: January 16, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`____________
`
`ZTE (USA) INC.,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00714
`Patent 6,470,399 B11
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Joint Motion to Terminate as to
`Petitioner ZTE (USA) Inc.
`37 C.F.R. § 42.74
`
`
`1 IPR2017-01808 has been joined with this proceeding.
`
`
`
`IPR2017-00714
`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 with respect to ZTE in light of the settlement between
`ZTE and Papst that resolves their dispute regarding U.S. Patent No.
`6,470,399 B1 (“the ’399 patent”). Paper 26 (“Mot.”). ZTE 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. 2008. Pursuant to 37 C.F.R. § 42.74(c), ZTE and Papst additionally
`filed a joint request to treat the Settlement Agreement as business
`confidential information kept separate from the file of the involved patent.
`Paper 27.
`For the reasons set forth below, the Joint Motion to Terminate with
`respect to ZTE 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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`2
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`IPR2017-00714
`Patent 6,470,399 B1
`
`determine that the parties’ contentions have merit, and that it is appropriate
`to terminate this proceeding with respect to ZTE. The proceeding, however,
`will not be terminated with respect to Papst, as other Petitioners—Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.—remain in the
`proceeding.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate, with respect to ZTE,
`is granted;
`FURTHER ORDERED that this review is terminated with respect to
`ZTE only; but this review continues 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 ZTE in the caption.
`
`
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`3
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`IPR2017-00714
`Patent 6,470,399 B1
`
`For PETITIONER:
`
`Scott Miller
`Darren Franklin
`Trevor Quist
`smiller@sheppardmullin.com
`dfranklin@sheppardmullin.com
`tquist@sheppardmullin.com
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`
`Carrier Beyer
`Nikola Colic
`Brian Rupp
`DRINKER BIDDLE & REATH LLP
`carrier.beyer@dbr.com
`nick.colic@dbr.com
`brian.rupp@dbr.com
`
`
`For PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`Joseph Marinelli
`Nicole Little
`FITCH, EVEN, TABIN & FLANNERY, LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`jmarinelli@fitcheven.com
`nlittle@fitcheven.com
`
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`4
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