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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. 19
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`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________
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`HTC CORPORATION, HTC AMERICA, Inc.
`ZTE CORPORATION, and ZTE (USA), Inc., Petitioners,
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`v.
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`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
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`Patent Owner
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`__________
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`Case IPR2017-01508
`U.S. Patent No. 8,385,966
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`__________
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`JOINT MOTION TO TERMINATE PETITIONERS PURSUANT TO 35 U.S.C. §
`317 AND 37 C.F.R. § 42.74
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`1
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`I.
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`Introduction
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`Joint Motion to Terminate Petitioners
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a), Petitioners HTC
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`Corporation, HTC America, Inc. ZTE Corporation, and ZTE (USA), Inc.
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`(“Petitioners”) and Patent Owner Cellular Communications Equipment LLC
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`(“CCE”) (collectively, “the Parties”) jointly request termination with respect to
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`Petitioners HTC Corporation and HTC America, Inc. (“HTC”) in the inter partes
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`review of U.S. Patent No. 8,385,966 (“the ‘966 Patent”). The filing of this request
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`was authorized by Supervisory Paralegal Maria Vignone on July 18, 2018.
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`II.
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`Statement of Facts
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`HTC and CCE have reached a Settlement Agreement to end their disputes in
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`this proceeding, a related IPR proceeding (No. IPR2017-01509), and the underlying
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`litigation in the Eastern District of Texas (Case No. 6:16-cv-475-KVM, captioned
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`Cellular Communications Equipment LLC v. HTC Corporation, et al.).
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`A true and correct copy of the Agreements are filed separately and
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`concurrently with this motion as Exhibits 2014 and 2015, along with a request to
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`treat the Agreements as business confidential information under 37 C.F.R. §
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`42.74(c). Exhibit 2014 and 2015 are being filed electronically as “Board Only.”
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`There are no other agreements, oral or written, between the parties made in
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`connection with, or in contemplation of, the termination of this proceeding.
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`1
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`Joint Motion to Terminate Petitioners
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`Petitioners ZTE Corporation, and ZTE (USA), Inc. (“ZTE”) are not parties to
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`the Agreement between HTC, RPX, and CCE. In that regard, the ‘966 patent is
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`presently asserted in civil actions involving the ZTE petitioners styled Cellular
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`Communications Equipment LLC v. ZTE Corporation, et al., 6:16-cv-00476-RWS-
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`KNM (E.D. Tex.).
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`III. Relief Requested
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`Termination of this inter partes review with respect to Petitioner HTC is
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`requested, and the parties respectfully submit that such termination is appropriate.
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`The relevant statutory provision on settlement provides that an inter partes review
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`“shall be terminated with respect to any petitioner upon the joint request of the
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`petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” 35 U.S.C. § 317(a). Here,
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`the Board has not yet decided the merits of the present inter partes review
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`proceeding, and so under 35 U.S.C. § 317(a) the proceeding should be terminated
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`with respect to Petitioner Apple upon this joint request.
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`In previous proceedings, the Board has granted joint motions to terminate
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`even when a proceeding was at a late stage, such as after oral argument. For
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`example, in Clio USA, Inc. v. The Procter & Gamble Co, the Board terminated the
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`proceeding after the oral hearing had already occurred because the Board had “not
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`yet decided the merits of this proceeding.” Clio USA, Inc. v. The Procter & Gamble
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`2
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`Joint Motion to Terminate Petitioners
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`Co., IPR2013-00438, Paper 57 at 2 (PTAB Oct. 31, 2014); see also Apple Inc. v.
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`Nagravision SA, Case IPR2015-00971, Paper 30 at 2-3 (PTAB Sept. 7, 2016)
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`(termination request granted after oral hearing). Additionally, in Blackberry Corp.,
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`et al. v. MobileMedia Ideas, LLC, the Board agreed to terminate the proceeding with
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`respect to the petitioner nearly three months after the oral hearing. Blackberry Corp.,
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`et al. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 64 at 2-3 (PTAB Jan. 21,
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`2014). As such, even though the oral hearing has occurred in this proceeding, the
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`parties respectfully submit that it is appropriate to terminate the proceeding under §
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`317(a) with respect to Petitioner HTC.
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`Additionally, termination of this proceeding as to HTC would further the
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`underlying purpose of inter partes review, which is to provide an efficient and less
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`costly alternative forum for patent disputes. Maintaining the proceeding as to HTC,
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`however, would discourage further settlements, as patent owners in similar situations
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`would have a strong disincentive to settle if they perceived that an inter partes
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`review would nevertheless continue with respect to a petitioner that has settled.
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`Indeed, the Board has stated an expectation that proceedings such as these will be
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`terminated after the filing of a settlement agreement: “[t]here are strong public policy
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`reasons to favor settlement between the parties to a proceeding. … The Board
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`expects that a proceeding will terminate after the filing of a settlement agreement,
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`unless the Board has already decided the merits of the proceeding. 35 U.S.C. 317(a),
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`3
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`Joint Motion to Terminate Petitioners
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`as amended….” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
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`(Aug. 14, 2012).
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`For at least these reasons, termination of this proceeding with respect to
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`Petitioner HTC is warranted.
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`IV. Conclusion
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`For the foregoing reasons, the Parties respectfully request termination with
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`respect to Petitioner HTC in the inter partes review of U.S. Patent No. 8,385,966,
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`Case No. IPR2017-01508.
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`4
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`Joint Motion to Terminate Petitioners
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`Dated: July 20, 2018
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`Respectfully submitted,
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`By:
`/s/ Stephen A. Moore
`Steven A. Moore (Reg. No.
`55,462)
`steve.moore@pillsburylaw.com
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`501 W. Broadway, Suite
`1100 San Diego, CA
`92101 Telephone:
`619.544.3112
`Facsimile: 619.236.1995
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`Brian Nash (Reg. No. 58,105)
`brian.nash@pillsburylaw.com
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: 512.580.9629
`Facsimile: 512.580.9601
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`Counsel for Petitioners
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`Respectfully Submitted,
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`
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`/s/ Matthew C. Juren
`Matthew C. Juren
`Registration No. 68,233
`Attorney for Patent Owner
`NELSON BUMGARDNER
`ALBRITTON P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-9111
`Facsimile: (817) 377-3485
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`5
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`Dated: July 20, 2018
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`Joint Motion to Terminate Petitioners
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`CERTIFICATE OF SERVICE
`I hereby certify that on July 20, 2018, I caused a true and correct copy of
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`the JOINT MOTION TO TERMINATE PETITIONERS to be sent via
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`email to the following:
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`Steven A. Moore (Reg. No. 55,462)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: 619-544-3112
`Facsimile: 619-236-1995
`Email: steve.moore@pillsburylaw.com
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`Brian Nash (Reg. No. 58,105)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Post and Hand Delivery Address
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: 512.580.9629
`Facsimile: 512.580.9601
`Email: brian.nash@pillsburylaw.com
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`Cheng (Jack) Ko (Reg. No. 54,227)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: 619-544-5000
`Facsimile: 619-236-1995
`Email: jack.ko@pillsburylaw.com
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`Dated: July 20, 2018
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`Respectfully Submitted,
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`6
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`Joint Motion to Terminate Petitioners
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`/s/ Matthew C. Juren
`Matthew C. Juren
`Registration No. 68,233
`Attorney for Patent Owner
`NELSON BUMGARDNER
`ALBRITTON P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-9111
`Facsimile: (817) 377-3485
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`7
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