`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 24
`
`
`
`__________
`
`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
`U.S. Patent No. 8,385,966
`
`__________
`
`JOINT MOTION TO TERMINATE PETITIONERS PURSUANT TO 35 U.S.C.
`§ 317 AND 37 C.F.R. § 42.74
`
`1
`
`
`
`
`
`
`
`I.
`
`Introduction
`
`Joint Motion to Terminate Petitioners
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a), Petitioners ZTE
`
`Corporation, and ZTE (USA), Inc. (“Petitioners” or “ZTE”) and Patent Owner
`
`Cellular Communications Equipment LLC (“CCE”) (collectively, “the Parties”)
`
`jointly request termination of inter partes review of U.S. Patent No. 8,385,966 (“the
`
`‘966 Patent”). The filing of this request was authorized by Supervisory Paralegal
`
`Specialist Eric W. Hawthorne on September 10, 2018.
`
`II.
`
`Statement of Facts
`
`ZTE and CCE have reached a Settlement Agreement to end their disputes in
`
`this proceeding, a related IPR proceeding (No. IPR2017-01509), and the underlying
`
`litigation in the Eastern District of Texas (Cellular Communications Equipment LLC
`
`v. ZTE Corporation, et al., 6:16-cv-00476-RWS-KNM (E.D. Tex.)). The ‘966 Patent
`
`is not presently asserted in any other pending litigation.
`
`A true and correct copy of the Agreement is filed separately and concurrently
`
`with this motion as Exhibit 2016, along with a request to treat the Agreement as
`
`business confidential information under 37 C.F.R. § 42.74(c). Exhibit 2016 is being
`
`filed electronically as “Board Only.” There are no other agreements, oral or written,
`
`between the parties made in connection with, or in contemplation of, the termination
`
`of this proceeding.
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`
`III. Relief Requested
`
`Joint Motion to Terminate Petitioners
`
`Termination of this inter partes review is requested, and the parties
`
`respectfully submit that such termination is appropriate. The relevant statutory
`
`provision on settlement provides that an inter partes review “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.” 35 U.S.C. § 317(a). Here, the Board has not yet decided
`
`the merits of the present inter partes review proceeding, and so under 35 U.S.C.
`
`§ 317(a) the proceeding should be terminated upon this joint request.
`
`In previous proceedings, the Board has granted joint motions to terminate
`
`even when a proceeding was at a late stage, such as after oral argument. For
`
`example, in Clio USA, Inc. v. The Procter & Gamble Co, the Board terminated the
`
`proceeding after the oral hearing had already occurred because the Board had “not
`
`yet decided the merits of this proceeding.” Clio USA, Inc. v. The Procter & Gamble
`
`Co., IPR2013-00438, Paper 57 at 2 (PTAB Oct. 31, 2014); see also Apple Inc. v.
`
`Nagravision SA, Case IPR2015-00971, Paper 30 at 2-3 (PTAB Sept. 7, 2016)
`
`(termination request granted after oral hearing). Additionally, in Blackberry Corp.,
`
`et al. v. MobileMedia Ideas, LLC, the Board agreed to terminate the proceeding with
`
`respect to the petitioner nearly three months after the oral hearing. Blackberry Corp.,
`
`
`
`2
`
`
`
`
`
`
`
`Joint Motion to Terminate Petitioners
`
`et al. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 64 at 2-3 (PTAB Jan. 21,
`
`2014). As such, even though the oral hearing has occurred in this proceeding, the
`
`parties respectfully submit that it is appropriate to terminate the proceeding under
`
`§ 317(a).
`
`Additionally, termination of this proceeding would further the underlying
`
`purpose of inter partes review, which is to provide an efficient and less costly
`
`alternative forum for patent disputes. Maintaining the proceeding as to ZTE,
`
`however, would discourage further settlements, as patent owners in similar situations
`
`would have a strong disincentive to settle if they perceived that an inter partes
`
`review would nevertheless continue with respect to a petitioner that has settled.
`
`Indeed, the Board has stated an expectation that proceedings such as these will be
`
`terminated after the filing of a settlement agreement: “[t]here are strong public policy
`
`reasons to favor settlement between the parties to a proceeding. … The Board
`
`expects that a proceeding will terminate after the filing of a settlement agreement,
`
`unless the Board has already decided the merits of the proceeding. 35 U.S.C. 317(a),
`
`as amended….” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`
`(Aug. 14, 2012).
`
`For at least these reasons, termination of this proceeding is warranted.
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`Joint Motion to Terminate Petitioners
`
`IV. Conclusion
`
`For the foregoing reasons, the Parties respectfully request termination of the
`
`inter partes review of U.S. Patent No. 8,385,966, Case No. IPR2017-01508.
`
`Dated: September 10, 2018
`
`Respectfully submitted,
`
`By:/s/ Steven 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
`
`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
`
`Counsel for Petitioners
`
`
`Respectfully Submitted,
`
`/s/ Matthew C. Juren
`Matthew C. Juren
`Registration No. 68,233
`Attorney for Patent Owner
`NELSON BUMGARDNER
`ALBRITTON P.C.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`Dated: September 10, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Joint Motion to Terminate Petitioners
`
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-9111
`Facsimile: (817) 377-3485
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on September 10th, I caused a true and correct copy
`
`of the JOINT MOTION TO TERMINATE PETITIONERS to be sent via
`
`email to the following:
`
`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
`
`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
`
`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
`
`
`
`5
`
`
`
`
`
`
`
`Joint Motion to Terminate Petitioners
`
`Telephone: 619-544-5000
`Facsimile: 619-236-1995
`Email: jack.ko@pillsburylaw.com
`
`
`Dated: September 10, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/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
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`