`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`ZTE (USA) Inc., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`___________________
`
`Case IPR2018-00274
`Patent No. 7,834,586
`___________________
`
`JOINT MOTION TO DISMISS SAMSUNG FROM THE
`PROCEEDING PURSUANT 35 U.S.C. § 317(a) AND 37 C.F.R. § 42.5(a)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10541414
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`
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`Case IPR2018-00274
`Patent No. 7,834,586
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`I.
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`Statement of Relief Requested
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.5(a), and the Board’s
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`authorization via email on July 13, 2018, Petitioner Samsung Electronics Co., Ltd.
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`and Samsung Electronics America, Inc. (collectively, “Samsung”), and Patent
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`Owner, Fundamental Innovation Systems International LLC, jointly move that the
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`Board dismiss Samsung from the above-captioned proceeding as a result of a
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`settlement between Samsung and Patent Owner.
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`The parties are filing concurrently herewith a request that the settlement
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`agreement between the parties, submitted as Exhibit 2015, be treated as business
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`confidential information and be kept separate from the file of the involved patent,
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`pursuant to 37 C.F.R. § 42.74(c).
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`The settlement agreement is being filed as "Only to Board" so that ZTE
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`would not have access to it.
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`II.
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`Statement of Facts
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`In February of 2017, Patent Owner brought a suit against Samsung in the
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`United States District Court for the Eastern District of Texas (Civ. No. 2:17-cv-
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`00145-JRG-RSP), asserting infringement of one or more claims of U.S. 7,834,586
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`(the “’586 Patent”). The '586 Patent is also the subject of civil action numbers
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`2:16-cv-01424-JRG-RSP (against LG Electronics, Inc. et al.) and 2:16-cv-01425-
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`JRG-RSP (against Huawei) pending in the U.S. District Court for the Eastern
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`Case IPR2018-00274
`Patent No. 7,834,586
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`District of Texas, and Civil Action No. 3:17-cv-01827-N (against ZTE Corporation
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`et al.) pending in the U.S. District Court for the Northern District of Texas.
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`Samsung and ZTE (USA) Inc. (“ZTE”) sought inter partes review of the
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`’586 Patent in this proceeding. Patent Owner filed its preliminary responses on
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`June 8, 2018. The Board's institution decision is not due until September 8, 2018.
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`On July 6, 2018, Samsung and Patent Owner entered into a settlement
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`agreement. See Ex. 2015 (Confidential). Pursuant to the terms of the settlement
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`agreement, the parties agree, among other things, for Samsung to withdraw with
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`prejudice from the above-captioned IPR proceeding.
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`III. Argument
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`A.
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`Legal Standard
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`35 U.S.C. § 317(a) provides that “[a]n inter partes review instituted under
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`this chapter shall be terminated with respect to any petitioner upon the joint request
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`of the petitioner and the patent owner, unless the Office has decided the merits of
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`the proceeding before the request for termination is filed.”
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`Moreover, "[t]he Board may determine a proper course of conduct in a
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`proceeding for any situation not specifically covered by this part and may enter
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`non-final orders to administer the proceeding." 37 C.F.R. § 42.5(a). The Board
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`may also "take up petitions or motions for decisions in any order, may grant, deny,
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`or dismiss any petition or motion, and may enter any appropriate order." 37 C.F.R.
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`Case IPR2018-00274
`Patent No. 7,834,586
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`§ 42.71(a). Hence, in the past, the Board has dismissed a pre-institution proceeding
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`or allowed a party to withdraw from a pre-institution proceeding under 37 C.F.R.
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`§§ 42.5(a) and 42.71(a). Cf. Samsung Electronics Co., Ltd. v. Nvidia Corp.,
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`IPR2015-01270, Paper 11 (PTAB Dec. 9, 2015) (dismissing Samsung's petition
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`pre-institution under 37 C.FR. §§ 42.5(a) and 42.71(a)); Borgwarner Emissions
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`Systems, LLC v. Modine Manufacturing Co., IPR2018-00407, Paper 11 (PTAB,
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`July 5, 2018) (dismissing petition pre-institution under 37 C.FR. §§ 42.5(a) and
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`42.71(a).
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`B.
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`The Board Should Exercise Its Discretion and Dismiss Samsung
`from the Above-Captioned Proceeding
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`As noted in the Statement of Facts, Samsung and Patent Owner have settled
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`their dispute. The Board has also yet to issue a decision on institution. Dismissing
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`Samsung from the proceedings would effect the agreement between the Patent
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`Owner and Samsung.
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`Dismissing Samsung from the proceedings would not prejudice ZTE
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`because ZTE can continue litigating the merits of the case before the Board.
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`C.
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`Status of Related Matters
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`The parties are filing herewith as Exhibit 2015 a true copy of settlement
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`agreement entered between the parties on July 6, 2018. The settlement agreement
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`was entered into in contemplation of dismissing Samsung from this proceeding and
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`Case IPR2018-00274
`Patent No. 7,834,586
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`Fundamental Innovation Systems International LLC v. Samsung Electronics Co.,
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`Ltd. et al., E.D. Tex., No. 2:17-cv-00145-JRG-RSP. This settlement agreement is
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`the only agreement or understanding between Samsung and Patent Owner made in
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`connection with, or in contemplation of dismissing Samsung. 37 C.F.R. §
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`42.74(b).
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`IV. Conclusion
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`Samsung and Patent Owner respectfully request that the Board grant the
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`parties’ Joint Motion to dismiss Samsung from the proceeding. The parties also
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`request that the Board grant Samsung and Patent Owner’s joint request to treat the
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`settlement agreement between the parties as business confidential information and
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`keep it separate from the file of the ’586 Patent.
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`Dated: July 13, 2018
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`Respectfully submitted,
`
`/s/ Greg Arovas
`
`/s/ Hong Zhong
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`Case IPR2018-00274
`Patent No. 7,834,586
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`Michael R. Fleming (Reg. No. 67,933)
`H. Annita Zhong (Reg. No. 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
`
`Gregory S. Arovas (Reg. 38,818)
`greg.arovas@kirkland.com
`Robert A. Appleby (Reg. 40,897)
`robert.appleby@kirkland.com
`Todd M. Friedman (Reg. 42,559)
`todd.friedman@kirkland.com
`Alan Rabinowitz (Reg. 66,217)
`arabinowitz@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10028
`T: 212-446-4800
`F: 212-446-6460
`
`Eugene Goryunov (Reg. 61,579)
`eugene.goryunov@kirkland.com
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, IL 60654
`T: 312-862-2000
`F: 312-862-2200
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`Case IPR2018-00274
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. section 42.6, that on July 13, 2018, a
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`complete copy of the foregoing document, Joint Request to File Agreement as
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`Business Confidential Information and Keep it Separate from File of US Patent
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`No. 7,834, 586 under 37 C.F.R. § 42.74, and Exhibit 2015 were served upon the
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`following, by ELECTRONIC MAIL:
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`KIRKLAND & ELLIS LLP
`Gregory S. Arovas
`greg.arovas@kirkland.com
`Robert A. Appleby
`robert.appleby@kirkland.com
`Todd M. Friedman
`todd.friedman@kirkland.com
`Alan Rabinowitz
`alan.rabinowitz@kirkland.com
`Eugene Goryunov
`eugene.goryunov@kirkland.com
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`I further certify, pursuant to 37 C.F.R. section 42.6, that on July 13, 2018, a
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`complete copy of the foregoing document and Joint Request to File Agreement as
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`Business Confidential Information and Keep it Separate from File of US Patent
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`No. 7,834, 586 under 37 C.F.R. § 42.74 were served upon the following, by
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`electronic mail:
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`MCDERMOTT WILL & EMERY
`Charles M. McMahon
`cmcmahon@mwe.com
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`Case IPR2018-00274
`Patent No. 7,834,586
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`Hersh H. Mehta
`hmehta@mwe.com
`
`/Susan M. Langworthy/
` Susan M. Langworthy
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