Trial@uspto.gov
`571-272-7822
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` Paper: 17
` Dated: October 20, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`CRADLEPOINT, INC., DELL INC., HONEYWELL INTERNATIONAL, INC.,
`SIERRA WIRELESS, INC., TCL COMMUNICATION TECHNOLOGY
`HOLDINGS LIMITED, TCT MOBILE INTERNATIONAL LIMITED,
`TCT MOBILE, INC., TCT MOBILE (US) INC.,
`TCT MOBILE (US) HOLDINGS INC.,
`THALES DIS AIS DEUTSCHLAND GMBH,
`ZTE CORPORATION, and ZTE (USA) INC.,
`Petitioner
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`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`IPR2021-00906
`Patent 7,580,388 B2
`
`
`Before JAMESON LEE, AARON W. MOORE,
`and RUSSELL E. CASS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
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`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
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`

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`IPR2021-00906
`Patent 7,580,388 B2
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`I.
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`INTRODUCTION
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`On August 24, 2021, ZTE Corporation, ZTE (USA) Inc., and Patent Owner
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`(hereinafter “Joint Movants”) filed a Joint Motion to Terminate the Proceeding and
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`Reconstitute Petitioner as the collective of the remaining sub-entities of current
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`Petitioner due to settlement. Paper 14 (“Motion”). The Joint Movants also filed,
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`on August 24, 2021, a true copy of a settlement agreement, and a Joint Request
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`that the Settlement Agreement be Treated as Business Confidential Information
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`and be Kept Separate under 35 U.S.C. § 317(b). Ex. 2001 (“Settlement
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`Agreement”), Paper 15 (“Request”).
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`II. DISCUSSION
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`
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`The Motion states: “[T]he ZTE entities [i.e., ZTE Corporation and ZTE
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`(USA) Inc. (see Motion 1)] and Patent Owner entered into a settlement agreement
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`resolving their disputes in connection with the involved patent.” Paper 14, 3. The
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`Motion also states: “Pursuant to 35 U.S.C. § 317(b), filed concurrently herewith as
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`Ex. 2001 is a true copy of the settlement agreement entered between Patent Owner
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`and the ZTE entities on August 4, 2021.” Id. at 4. The Motion further states: “The
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`ZTE entities and Patent Owner certify that there are no collateral agreements or
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`understandings made in connection with, or in contemplation of, the termination of
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`the inter partes review.” Id. The Motion requests termination of the proceeding
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`with respect to the ZTE entities. Id. at 5.
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement, unless the Board has already decided the merits of the
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`proceeding. PTAB Consolidated Trial Practice Guide, 86 (November 2019).1
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`This proceeding is at an early stage. We have not issued a decision on whether to
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`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`-2-
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`

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`IPR2021-00906
`Patent 7,580,388 B2
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`institute an inter partes review. Under these circumstances, we grant the Motion to
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`terminate the proceeding with respect to the ZTE entities. Accordingly, Petitioner
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`is reconstituted as the collective of the remaining sub-entities of current Petitioner.
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`Additionally, in the Request, the Joint Movants:
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`jointly request that the settlement agreement be kept as a separate paper
`to be made available only under the provisions of 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c). The settlement agreement has been filed for
`access “Available only to board.” The Joint Movants further jointly
`request that the Board order that in the event a person or entity makes
`a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to
`the settlement agreement, that any such written request be served upon
`the parties on the day the written request is provided to the Board.
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`Paper 15, 1. We grant-in-part the Request. The Settlement Agreement shall be
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`kept separate from the file of U.S. Patent 7,580,388 B2, and will be made available
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`only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`However, we deny the portion of the Request seeking an order from the
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`Board that, in the event a person or entity makes a written request, as stated in
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`37 C.F.R. § 42.74(c)(1)–(2) for access to the Settlement Agreement, any such
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`written request be served upon the parties on the day the written request is
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`provided to the Board. Neither the statute nor the rule includes such a requirement.
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`It is
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`III. ORDER
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`ORDERED that the Joint Motion to Terminate the Proceeding and
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`Reconstitute Petitioner as the collective of the remaining sub-entities of current
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`Petitioner is granted with respect to ZTE Corporation and ZTE (USA) Inc., and
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`that ZTE Corporation and ZTE (USA) Inc. are terminated from this proceeding;
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`FURTHER ORDERED that the Joint Request that the Settlement Agreement
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`be Treated as Business Confidential Information and be Kept Separate under
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`-3-
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`IPR2021-00906
`Patent 7,580,388 B2
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`35 U.S.C. § 317(b) is granted-in-part and denied-in-part, in the manner noted
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`above; and
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`FURTHER ORDERED that the Settlement Agreement shall be kept separate
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`from the file of U.S. Patent 7,580,388 B2, and will be made available only under
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`the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`-4-
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`IPR2021-00906
`Patent 7,580,388 B2
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`Petitioner Email Service Address:
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`litigation-dkt@addyhart.com
`Cradlepoint-IPRService@hklaw.com
`Dell-IPRService@gibsondunn.com
`SISVELII.IPR.Service@klgates.com
`PerkinsServiceSisvelIPR@perkinscoie.com
`TCLSisvelIPRService@pvuslaw.com
`ZTEIPRService@bannerwitcoff.com
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`
`For PETITIONER:
`
`Meredith Martin Addy
`Robert P. Hart
`Gregory B. Gulliver
`ADDYHART P.C.
`meredith@addyhart.com
`robert@addyhart.com
`gbgulliver@addyhart.com
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`For PATENT OWNER:
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`Timothy Devlin
`Devlin Law Firm LLC
`TD-PTAB@devlinlawfirm.com
`
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`For VARIOUS SUB-ENTITIES OF PETITIONER
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`Benjamin E. Weed
`Erik J. Halverson
`Brian Paul Bozzo
`K & L GATES LLP
`Benjamin.weed.PTAB@klgates.com
`erik.halverson@klgates.com
`brian.bozzo@klgates.com
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`-5-
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`IPR2021-00906
`Patent 7,580,388 B2
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`Amanda Tessar
`Daniel T. Keese
`PERKINS COIE LLP
`atessar@perkinscoie.com
`DKeese@perkinscoi.com
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`John R. Hutchins
`C. Andy Mu
`Craig Kronenthal
`Banner & Witcoff, Ltd.
`jhutchins@bannerwitcoff.com
`amu@bannerwitcoff.com
`ckronenthal@bannerwitcoff.com
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`Brian M. Buroker
`Paul Torchia
`Nathan R. Curtis
`Gibson, Dunn & Crutcher
`bburoker@gibsondunn.com
`ptorchia@gibsondunn.com
`ncurtis@gibsondunn.com
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`Jeremy D. Peterson
`Bradford A. Cangro
`PV Law LLP
`jeremy.peterson@pvuslaw.com
`bradford.cangro@pvuslaw.com
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`Jacob K. Baron
`Allison M. Lucier
`HOLLAND & KNIGHT LLP
`jacob.baron&hklaw.com
`allison.lucier@hklaw.com
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`-6-
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