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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) INC., LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A. INC., LG ELECTRONICS
`MOBILECOMM U.S.A. INC., LG ELECTRONICS MOBILE
`RESEARCH U.S.A. LLC and LG ELECTRONICS
`ALABAMA, INC.
`
`
`Petitioner,
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`
`Patent Owner.
`
`Case IPR2018-001111
`Patent No. 8,624,550 B2
`
`JOINT MOTION TO TERMINATE LG ENTITIES
` FROM THE PROCEEDING
`
`
`1 LG Electronics, Inc., LG Electronics U.S.A. Inc., LG Electronics Mobilecomm
`U.S.A. Inc., LG Electronics Mobile Research U.S.A. LLC, and LG Electronics
`Alabama, Inc. were joined as parties to this proceeding via a Motion for Joinder in
`IPR2018-00461.
`
`
`
`Case No. IPR2018-00111
`Patent No. 8,624,550
`
`
`I.
`
`Statement of Relief Requested
`
`
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.5(a), 42.71(a) and 42.74, and
`
`the Board's authorization via email on October 22, 2018, Petitioner LG Electronics,
`
`Inc., LG Electronics U.S.A. Inc., LG Electronics Mobilecomm U.S.A. Inc., LG
`
`Electronics Mobile Research U.S.A. LLC and LG Electronics Alabama, Inc.
`
`(collectively, "LG"), and Patent Owner Fundamental Innovation Systems
`
`International LLC, jointly move that the Board dismiss LG from the above-captioned
`
`proceeding as a result of a settlement between LG and Patent Owner.
`
`The parties are filing concurrently herewith a request that the settlement
`
`agreement between the parties, submitted as Exhibit 2027, be treated as business
`
`confidential information and be kept separate from the file of the involved patent,
`
`pursuant to 37 C.F.R. § 42.74(c). The settlement agreement is being filed as "Only
`
`to Board" so that ZTE will not have access to it.
`
`II.
`
`Statement of Facts
`
`In December 2016, Patent Owner brought a suit against LG in the United States
`
`District Court for the Eastern District of Texas (Civ. No. 2:16-cv-01425-JRG-RSP.),
`
`asserting infringement against Petitioner of one or more claims of U.S. 8,6234,550
`
`(the "550 Patent"). On May 5, 2017, Patent Owner amended its complaint and asserted
`
`additional patents against LG. On January 11, 2018, Petitioner sought inter partes
`
`review of the '550 Patent in IPR2018-00461 and additionally sought to join this
`
`
`10596609
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`- 1 -
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`
`
`Case No. IPR2018-00111
`Patent No. 8,624,550
`
`IPR2018-00111 proceeding. On May 9, 2018, the Board instituted a trial in IPR2018-
`
`
`
`00111. On May 29, 2018, the Board granted LG's petition and the joinder motion,
`
`consolidated IPR2018-00461 with IPR2018-00111 and terminated IPR2018-00461.
`
`Due Date 2 is November 15, 2018, nearly a month away. Oral argument, if
`
`requested, is currently scheduled for February 5, 2019. Paper 19 at 8. The Board's
`
`final written decision is not due until May 9, 2019, over six months from now.
`
`On October 17, 2018, the parties entered into a written settlement agreement.
`
`See Ex. 2010 (Confidential). Pursuant to the terms of the written settlement
`
`agreement, the parties agree, among other things, to dismiss with prejudice the pending
`
`district court action and to request dismissal and/or termination of the pending inter
`
`partes reviews, including with respect to LG in this proceeding.
`
`III. Argument
`
`A. Legal Standard
`
`35 U.S.C. § 317(a) provides that "[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 the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed."
`
`In addition, "[t]he Board may determine a proper course of conduct in a
`
`proceeding for any situation not specifically covered by this part and may enter non-
`
`final orders to administer the proceeding." 37 C.F.R. § 42.5(a). "The Board may [also]
`
`take up petitions or motions for decisions in any order, may grant, deny, or dismiss
`- 2 -
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`10596609
`
`
`
`Case No. IPR2018-00111
`Patent No. 8,624,550
`
`any petition or motion, and may enter any appropriate order." 37 C.F.R. § 42.71(a).
`
`
`
`B.
`
`The Board Should Exercise Its Discretion and Dismiss LG from
`the Above-Captioned Proceeding
`As noted in the Statement of Facts, LG and Patent Owner have settled their
`
`dispute. Dismissing LG from the proceedings would effect the agreement between
`
`the Patent Owner and LG.
`
`Dismissing LG from the proceedings would not prejudice ZTE because ZTE
`
`can continue litigating the merits of the case before the Board.
`
`C.
`
`Status of Related Matters
`
`The settlement agreement between Patent Owner and Petitioner requires
`
`dismissal of all pending district court litigation concerning the patents at issue. The
`
`parties confirm that US 7,239,111, US 7,791,319, US 7,999,514, US 7,834,586, US
`
`7,893,655, US 8,232,766, and US 8,624,550, are the subject of the following case,
`
`which is stayed and expected to be dismissed in view of the settlement agreement:
`
`Name
`Fundamental Innovation
`Systems International LLC v.
`LG Electronics, Inc. et al
`
`Number
`2-16-cv-01425
`
`District
`TXED
`
`Filed
`Dec. 16. 2016
`
`The Board has already dismissed IPR2018-00676, -00677 and -00678 (prior to
`
`entry of any institution decision(s) therein). In addition to this motion, the parties has
`
`also filed a joint motion to terminate IPR2018-00683 in its entirety.
`
`
`10596609
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`- 3 -
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`
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`Case No. IPR2018-00111
`Patent No. 8,624,550
`
`D. Written Settlement Agreement
`
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties are filing
`
`herewith as Exhibit 2010, a true copy of settlement agreement entered between the
`
`parties on October 17, 2018. The settlement agreement was entered into in
`
`contemplation of terminating this proceeding and Fundamental Innovation Systems
`
`International LLC v. LG Electronics, Inc. et al., No. 2:16-cv-01425 (E.D. Tex.). This
`
`settlement agreement is the only agreement or understanding between Petitioner and
`
`Patent Owner made in connection with, or in contemplation of terminating this
`
`proceeding. 37 C.F.R. § 42.74(b).
`
`A request is being filed herewith to treat this agreement as business confidential
`
`information and to keep it separate from the files of the involved patent. The Parties
`
`further request the Board to not make the agreement available to any third party, except
`
`as provided for in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`
`IV. Conclusion
`
`LG and Patent Owner respectfully request that the Board grant the parties'
`
`Joint Motion to dismiss LG from the proceeding. The parties also request that the
`
`Board grant LG and Patent Owner's joint request to treat the settlement agreement
`
`between the parties as business confidential information and keep it separate from the
`
`file of the '550 Patent.
`
`
`
`
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`10596609
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`
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`Case No. IPR2018-00111
`Patent No. 8,624,550
`
`Dated: October 23, 2018 Respectfully submitted,
`
`
`
`/David L. McCombs/
`
`David L. McCombs (Reg. #32,271)
`Gregory P. Huh (Reg. #70,480)
`David M. O'Dell (Reg. #42,044)
`HAYNES BOONE
`2323 Victory Avenue, Ste. 700
`Dallas, TX 75219
`Tel: (214) 651-5533
`Fax: (972) 692-9116
`david.mccombs.ipr@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`david.odell.ipr@haynesboone.com
`
`Attorneys for Petitioner
`
`/ Hong Zhong/
`Michael R. Fleming (Reg. #67,933)
`H. Annita Zhong (Reg. #66,530)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Tel: (310) 277-1010
`Fax: (310) 203-7199
`Email: MFleming@irell.com
`Email: HZhong@irell.com
`
`Attorneys for Patent Owner
`
`
`10596609
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`- 5 -
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`
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`Case No. IPR2018-00111
`Patent No. 8,624,550
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. section 42.6, that on October 23,
`
`2018, a complete copy of the foregoing document, Joint Request to File
`
`Agreement as Business Confidential Information and Keep it Separate from File
`
`of U.S. Patent No. 8,624,550, and Exhibit 2027 were served upon the following,
`
`by electronic mail:
`
`HAYES AND BOONE, LLP
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`Gregory P. Huh
`gregory.huh.ipr@haynesboone.com
`David M. O'Dell
`David.odell.ipr@haynesboone.com
`
`
`I further certify, pursuant to 37 C.F.R. section 42.6, that on October 23,
`
`2018, a complete copy of the foregoing document and Joint Request to File
`
`Agreement as Business Confidential Information and Keep it Separate from File
`
`of U.S. Patent No. 8,624,550 were served upon the following, by electronic mail:
`
`MCDERMOTT WILL & EMERY (without Ex. 2027)
`Charles M. McMahon
`cmcmahon@mwe.com
`Brian A. Jones
`bajones@mwe.com
`Thomas DaMario
`tdamario@mwe.com
`
`
`
`
`
`
`
`
`
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`10596609
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`- 6 -
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`/Susan M. Langworthy/
` Susan M. Langworthy
`
`
`
`
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