UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`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
`
`10541414
`
`
`___________________
`
`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
`
`10541414
`
`
`
`Case IPR2018-00274
`Patent No. 7,834,586
`
`I.
`
`Statement of Relief Requested
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.5(a), and the Board’s
`
`authorization via email on July 13, 2018, Petitioner Samsung Electronics Co., Ltd.
`
`and Samsung Electronics America, Inc. (collectively, “Samsung”), and Patent
`
`Owner, Fundamental Innovation Systems International LLC, jointly move that the
`
`Board dismiss Samsung from the above-captioned proceeding as a result of a
`
`settlement between Samsung and Patent Owner.
`
`The parties are filing concurrently herewith a request that the settlement
`
`agreement between the parties, submitted as Exhibit 2015, 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
`
`would not have access to it.
`
`II.
`
`Statement of Facts
`
`In February of 2017, Patent Owner brought a suit against Samsung in the
`
`United States District Court for the Eastern District of Texas (Civ. No. 2:17-cv-
`
`00145-JRG-RSP), asserting infringement of one or more claims of U.S. 7,834,586
`
`(the “’586 Patent”). The '586 Patent is also the subject of civil action numbers
`
`2:16-cv-01424-JRG-RSP (against LG Electronics, Inc. et al.) and 2:16-cv-01425-
`
`JRG-RSP (against Huawei) pending in the U.S. District Court for the Eastern
`
`10541414
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`- 1 -
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`
`
`Case IPR2018-00274
`Patent No. 7,834,586
`
`District of Texas, and Civil Action No. 3:17-cv-01827-N (against ZTE Corporation
`
`et al.) pending in the U.S. District Court for the Northern District of Texas.
`
`Samsung and ZTE (USA) Inc. (“ZTE”) sought inter partes review of the
`
`’586 Patent in this proceeding. Patent Owner filed its preliminary responses on
`
`June 8, 2018. The Board's institution decision is not due until September 8, 2018.
`
`On July 6, 2018, Samsung and Patent Owner entered into a settlement
`
`agreement. See Ex. 2015 (Confidential). Pursuant to the terms of the settlement
`
`agreement, the parties agree, among other things, for Samsung to withdraw with
`
`prejudice from the above-captioned IPR 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.”
`
`Moreover, "[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 any petition or motion, and may enter any appropriate order." 37 C.F.R.
`
`10541414
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`
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`Case IPR2018-00274
`Patent No. 7,834,586
`
`§ 42.71(a). Hence, in the past, the Board has dismissed a pre-institution proceeding
`
`or allowed a party to withdraw from a pre-institution proceeding under 37 C.F.R.
`
`§§ 42.5(a) and 42.71(a). Cf. Samsung Electronics Co., Ltd. v. Nvidia Corp.,
`
`IPR2015-01270, Paper 11 (PTAB Dec. 9, 2015) (dismissing Samsung's petition
`
`pre-institution under 37 C.FR. §§ 42.5(a) and 42.71(a)); Borgwarner Emissions
`
`Systems, LLC v. Modine Manufacturing Co., IPR2018-00407, Paper 11 (PTAB,
`
`July 5, 2018) (dismissing petition pre-institution under 37 C.FR. §§ 42.5(a) and
`
`42.71(a).
`
`B.
`
`The Board Should Exercise Its Discretion and Dismiss Samsung
`from the Above-Captioned Proceeding
`
`As noted in the Statement of Facts, Samsung and Patent Owner have settled
`
`their dispute. The Board has also yet to issue a decision on institution. Dismissing
`
`Samsung from the proceedings would effect the agreement between the Patent
`
`Owner and Samsung.
`
`Dismissing Samsung 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 parties are filing herewith as Exhibit 2015 a true copy of settlement
`
`agreement entered between the parties on July 6, 2018. The settlement agreement
`
`was entered into in contemplation of dismissing Samsung from this proceeding and
`
`10541414
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`
`
`Case IPR2018-00274
`Patent No. 7,834,586
`
`Fundamental Innovation Systems International LLC v. Samsung Electronics Co.,
`
`Ltd. et al., E.D. Tex., No. 2:17-cv-00145-JRG-RSP. This settlement agreement is
`
`the only agreement or understanding between Samsung and Patent Owner made in
`
`connection with, or in contemplation of dismissing Samsung. 37 C.F.R. §
`
`42.74(b).
`
`IV. Conclusion
`
`Samsung and Patent Owner respectfully request that the Board grant the
`
`parties’ Joint Motion to dismiss Samsung from the proceeding. The parties also
`
`request that the Board grant Samsung 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 ’586 Patent.
`
`10541414
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`
`
`Dated: July 13, 2018
`
`Respectfully submitted,
`
`/s/ Greg Arovas
`
`/s/ Hong Zhong
`
`Case IPR2018-00274
`Patent No. 7,834,586
`
`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
`
`10541414
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`
`
`Case IPR2018-00274
`Patent No. 7,834,586
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`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. section 42.6, that on July 13, 2018, a
`
`complete copy of the foregoing document, Joint Request to File Agreement as
`
`Business Confidential Information and Keep it Separate from File of US Patent
`
`No. 7,834, 586 under 37 C.F.R. § 42.74, and Exhibit 2015 were served upon the
`
`following, by ELECTRONIC MAIL:
`
`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
`
`I further certify, pursuant to 37 C.F.R. section 42.6, that on July 13, 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 US Patent
`
`No. 7,834, 586 under 37 C.F.R. § 42.74 were served upon the following, by
`
`electronic mail:
`
`MCDERMOTT WILL & EMERY
`Charles M. McMahon
`cmcmahon@mwe.com
`
`10541414
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`
`
`Case IPR2018-00274
`Patent No. 7,834,586
`
`Hersh H. Mehta
`hmehta@mwe.com
`
`/Susan M. Langworthy/
` Susan M. Langworthy
`
`10541414
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`
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