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Canon Inc. v. Papst Licensing GmbH & Co. KG

Docket IPR2018-00410, Patent Trial and Appeal Board (Dec. 29, 2017)
Jennifer Bisk, Joni Chang, Miriam Quinn, presiding
Case TypeInter Partes Review
Patent
6895449
Patent Owner Papst Licensing GmbH & Co. KG
Petitioner Canon Inc.
Petitioner Nikon
...
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Olympus Corporation v. Papst Licensing GmbH & Co. KG

Docket IPR2017-01617, Patent Trial and Appeal Board (June 16, 2017)
Jennifer Bisk, Joni Chang, Miriam Quinn, presiding
Case TypeInter Partes Review
Patent
6895449
Patent Owner Papst Licensing GmbH & Co. KG
Petitioner Olympus Corporation
Petitioner Olympus America
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ZTE (USA) Inc. v. Papst Licensing GmbH & Co. KG

Docket IPR2017-00713, Patent Trial and Appeal Board (Jan. 17, 2017)
James Arpin, Jennifer Bisk, Joni Chang, presiding
Case TypeInter Partes Review
Patent
6895449
Patent Owner Papst Licensing GmbH & Co. KG
Petitioner ZTE (USA) Inc.
Petitioner LG Electronics
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Huawei Device Co., Ltd. v. Papst Licensing GmgH & Co. KG

Docket IPR2017-00448, Patent Trial and Appeal Board (Dec. 8, 2016)
Jennifer Bisk, Joni Chang, Miriam Quinn, presiding
Case TypeInter Partes Review
Patent
6895449
Petitioner Huawei Device Co., Ltd.
Patent Owner Papst Licensing GmgH & Co. KG
Petitioner Zte
...
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Inter Partes Review of U.S. Pat. 6,895,449

Docket IPR2017-00415, Patent Trial and Appeal Board (Dec. 6, 2016)
Jennifer Bisk, Joni Chang, Miriam Quinn, presiding
Case TypeInter Partes Review
Patent
6895449
Petitioner Huawei Device Co., Ltd.
Patent Owner Papst Licensing GmbH & Co, KG
Petitioner Zte
...
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16 Termination Decision Document: Termination Decision Document

Document IPR2017-00713, No. 16 Termination Decision Document - Termination Decision Document (P.T.A.B. Jan. 17, 2018)
Petitioner, ZTE (USA) Inc. (“ZTE”), and Patent Owner, Papst Licensing GmbH & Co. KG (“Papst”), jointly move to terminate this inter partes review in light of their settlement that resolves their dispute regarding U.S. Patent No. 6,895,449 B2 (“the ’449 patent”).
The parties also filed a true copy of their written settlement agreement in connection with the termination as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
Notably, 35 U.S.C. § 317(a), in part, provides the following (emphasis added): (a) IN GENERAL.—An 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.
Although this inter partes review has been instituted, the proceeding is still in the briefing stage.
In consideration of the foregoing, it is hereby: ORDERED that the Joint Motion to Terminate is granted; FURTHER ORDERED that this review is terminated as to all parties including ZTE and Papst; and FURTHER ORDERED that the Joint Request to File Settlement Agreement as Business Confidential Information and to keep such settlement agreement separate from the patent file, and to make it available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.
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17 Refund Approval: Notice of Refund

Document IPR2018-00410, No. 17 Refund Approval - Notice of Refund (P.T.A.B. Mar. 23, 2018)
Petitioner’s request for a refund of certain post-institution fees paid on December 29, 2017, in the above proceeding is hereby granted.
The amount of $14,400.00 has been refunded to Petitioner’s deposit account.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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15 Institution Decision: Trial Instituted Document

Document IPR2018-00410, No. 15 Institution Decision - Trial Instituted Document (P.T.A.B. Feb. 2, 2018)
Petitioner concurrently filed a Motion for Joinder (Paper 5, “Mot.”), seeking to be joined to ZTE (USA) Inc. v Papst Licensing GMBH, Case No. IPR2017-00415 (the “ZTE IPR”).
In addition, Petitioner filed a Motion to Waive or Suspend Rule 37 C.F.R. § 42.122.
Because the dismissal of both of Petitioner’s motions determines the outcome of the Petition in this case, we need not wait for Patent Owner’s response.
The parties indicate that the ’449 patent has been asserted in cases taking place in several district courts.
There is no dispute that Petitioner was served with a complaint alleging infringement of the ’449 patent more than one year before it filed its Petition.
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