`571-272-7822
`
`
`
`
`Paper 23
`Entered: July 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, Inc.
`ZTE CORPORATION, and ZTE (USA), Inc.,
`Petitioners
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`___________
`
`Case IPR2017-01508 (Patent 8,385,966 B2)
`Case IPR2017-01509 (Patent 9,037,129 B2)1
`____________
`
`
`
`Before BRYAN F. MOORE, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Joint Motion to Terminate with Respect to HTC Corporation and HTC
`America, Inc.
`37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`1 The parties are not authorized to use this caption. The parties should use
`the caption appropriate to the specific case.
`
`
`
`IPR2017-01508 (Patent 8,385,966)
`IPR2017-01509 (Patent 9,037,129)
`
`
`INTRODUCTION
`
`On November 26, 2017, we instituted an inter partes review in both
`
`IPR2017-01508 and IPR2017-01509 (“’1508 IPR” and “’1509 IPR,”
`
`respectively), both captioned HTC Corporation, HTC America, Inc.
`
`(“HTC”), ZTE Corporation, and ZTE (USA), Inc. (“ZTE”) (collectively,
`
`“Petitioners”) versus Cellular Communications Equipment LLC (“Patent
`
`Owner”). In both proceedings, a final hearing was held on July 10, 2018.
`
`The Board has not issued a final written decision. Per our email dated July
`
`18, 2018, we authorized the filing of a motion to terminate and to treat the
`
`settlement documents as confidential as to HTC. See Ex. 3001. Per our
`
`authorization, on July 20, 2018, Petitioners and Patent Owner filed a Joint
`
`Motion to Terminate Petitioners Pursuant to 35 U.S.C. § 317 and 37 C.F.R.
`
`§ 42.74 as to HTC only (“Joint Motion”). ’1508 IPR, Paper 19; ’1509 IPR,
`
`Paper 20. Concurrent with the filing of the Joint Motion, a true copy of
`
`Release Agreement and a Patent License and License Option Agreement
`
`(’1508 IPR, Exs. 2014 and 2015; ’1509 IPR, Exs. 2005 and 2006) were
`
`filed. Also concurrent with the filing of the Joint Motion, a Joint Request to
`
`Treat Agreement as Business Confidential Information Under 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c) was filed. ’1508 IPR, Paper 20; ’1509
`
`IPR, Paper 21.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” The
`
`grant of the motion to terminate will not result in the termination of the
`
`instant proceeding, because ZTE remains a Petitioners. The parties are
`
`2
`
`
`
`IPR2017-01508 (Patent 8,385,966)
`IPR2017-01509 (Patent 9,037,129)
`
`reminded that the Board is not a party to the settlements, and may identify
`
`independently any question of patentability. 37 C.F.R § 42.74(a).
`
`Generally, however, the Board expects that a proceeding will
`
`terminate as to settling parties after the filing of a settlement agreement.
`
`See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`
`(Aug. 14, 2012). The Board is persuaded that, under these circumstances, it
`
`is appropriate to terminate this proceeding only as to HTC. See 37 C.F.R.
`
`§ 42.72.
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that the joint motion to terminate this proceeding with
`
`respect to HTC is GRANTED, and this proceeding is hereby terminated only
`
`as to HTC; and
`
`FURTHER ORDERED that the parties’ Joint Request to Treat
`
`Agreement as Business Confidential Information Under 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(c) relating to ’1508 IPR Exhibits 2014 and 2015 and
`
`’1509 IPR Exhibits 2005 and 2006, is GRANTED, and the specified exhibits
`
`shall be: (i) treated as business confidential information; (ii) kept separate
`
`from the files of U.S. Patent Nos. 8,385,966 and 9,037,129; (iii) kept
`
`confidential from any third party (including from the non-settling Petitioner
`
`ZTE); (iv) filed as “BOARD ONLY,” and (v) made available only to
`
`Federal Government agencies on written request, or to any person on a
`
`showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c).
`
`
`
`
`
`3
`
`
`
`IPR2017-01508 (Patent 8,385,966)
`IPR2017-01509 (Patent 9,037,129)
`
`
`PETITIONER:
`
`Steve Moore
`steve.moore@pillsburylaw.com
`
`Brian Nash
`brian.nash@pillsburylaw.com
`
`
`
`PATENT OWNER:
`
`Matthew Juren
`matthew@nelbum.com
`
`Barry Bumgardner
`barry@nelbum.com
`
`
`
`
`
`
`4
`
`
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