• All Courts
  • Federal Courts
  • Bankruptcies
  • PTAB
  • ITC
Track Search
Export
Download All
85 results

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
cite Cite Docket

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.
cite Cite Document

9 Order: Scheduling Order

Document IPR2017-00713, No. 9 Order - Scheduling Order (P.T.A.B. Jul. 17, 2017)
This order sets due dates for the parties to take action after institution of the instant proceeding.
A notice of the stipulation, specifically identifying the changed due dates, must be promptly filed.
The parties are reminded that the Testimony Guidelines appended to the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (Appendix D), apply to this proceeding.
Patent 6,895,449 B2 expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
The petitioner must file any reply to the patent owner’s response and opposition to the motion to amend by DUE DATE 2.
cite Cite Document

8 Institution Decision: Trial Instituted Document

Document IPR2017-00713, No. 8 Institution Decision - Trial Instituted Document (P.T.A.B. Jul. 17, 2017)
The ’449 patent further discloses that it was known to those skilled in the art that a virtual boot sequence includes “the drive type, the starting position and the length of the file allocation table (FAT), the number of sectors.” Id. at 5:30–32.
Citing to the Declaration of Mr. Gafford, Patent Owner argues that Aytac discloses “numerous additional, non-customary and non-multi- purpose interface drivers that are required for the host device to communicate with Aytac’s CaTbox.” Id. at 30 (emphasis added); Ex. 2001 ¶¶ 51–58.
Upon review of the parties’ contentions and supporting evidence, we determine that Petitioner has shown sufficiently for purposes of this Decision that the combined teachings of Aytac, the SCSI Specification, the MS-DOS Encyclopedia, and the Admitted Prior Art at least suggest the aforementioned “driver” limitations.
In light of the foregoing, we are persuaded that Petitioner has shown adequately for the purposes of this Decision that the combined prior art teachings at least suggest the aforementioned “driver” limitations recited by claims 1 and 17.
Conclusion In view of the foregoing, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that claims 1, 16, and 17 are unpatentable as obvious under § 103(a) over the combined teachings of Aytac, the SCSI Specification, the MS-DOS Encyclopedia, and the Admitted Prior Art.
cite Cite Document

4 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2017-00713, No. 4 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Jan. 31, 2017)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” 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 Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2017-00713 Patent No. 6,895,449 B2 mediation, etc.) was used and the general result.
cite Cite Document

15 Motion: JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL INFORMATION AND TO MAINTAIN SAID AGREEMENT SEPARATE FROM THE PUBLIC FILE PURSUANT TO 35 USC 317b AND 37 CFR 4274c

Document IPR2017-00713, No. 15 Motion - JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL INFORMATION AND TO MAINTAIN SAID AGREEMENT SEPARATE FRO...
Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s authorization of January 12, 2018, Petitioner ZTE (USA) Inc. and Patent Owner Papst Licensing GmbH & Co. KG jointly request to treat as business confidential information the true and complete copy of the Settlement Agreement between the parties, as referenced in the parties’ Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, filed concurrently herewith.
At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.
The present request, which is being filed contemporaneously with the Settlement Agreement, is timely and in accordance with the foregoing authority.
Therefore, parties request that the Settlement Agreement (i) be treated as business confidential information, (ii) be maintained separate from the publicly available file of the involved patent, and (iii) shall be made available only to Federal Government 2
LLP 120 S. LaSalle Street, Suite 1600 Chicago, IL 60603 Counsel for Patent Owner Papst Licensing GmbH & Co. KG /Scott R. Miller / Scott R. Miller Registration No. 32,276 Darren Franklin Registration No. 51,701
cite Cite Document

14 Motion: JOINT MOTION TO TERMINATE PURSUANT TO 35 USC 317 AND 37 CFR 4272 AND 4274

Document IPR2017-00713, No. 14 Motion - JOINT MOTION TO TERMINATE PURSUANT TO 35 USC 317 AND 37 CFR 4272 AND 4274 (P.T.A.B. Jan. 12, 2018)
Box 1450 Alexandria, Virginia 22313-1450 Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s authorization of January 12, 2018, Petitioner ZTE (USA) Inc. (“ZTE”) and Patent Owner Papst Licensing GmbH & Co. KG (“Patent Owner” or “Papst”) jointly move to terminate the present inter partes review proceeding in light of Patent Owner and ZTE’s settlement of their disputes.
ZTE and Patent Owner are concurrently filing a true and complete copy of
An inter partes review proceeding “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 .
A joint motion to terminate generally “must (1) include a brief explanation as to why termination is appropriate; (2) identify all parties in any related litigation involving the patents at issue; (3) identify any related proceedings currently before the Office, and (4) discuss specifically the current status of each such related litigation or proceeding with respect to each party to the litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26, at *2 (P.T.A.B. July 28, 2014).
As recognized by the rules of practice before the Board: There are strong public policy reasons to favor settlement between the parties to a proceeding.
cite Cite Document

13 Response: Papst Licensing GmbH Co KGs Patent Owner Response

Document IPR2017-00713, No. 13 Response - Papst Licensing GmbH Co KGs Patent Owner Response (P.T.A.B. Oct. 3, 2017)
Although the single ground of invalidity is alleged to be based on Aytac (Ex. 1005) in view of the SCSI Specification (Ex. 1006), the MS-DOS Encyclopedia (Ex. 1007), and alleged admitted prior art, Petitioner fails to provide a proper obviousness analysis, including considering each claimed invention as a whole, identification of the limitations not disclosed by Aytac, identification of where those limitations are taught by the SCSI Specification or the other asserted prior art, why and how the particular combination would have been made, i.e., “articulated reasoning with some rational underpinning to support the conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
The ’449 Patent recognizes that the existing options were wasteful and inefficient and presents a solution that would achieve high data transfer rates, without specialized software, while being sufficiently flexible to operate independent of device or host manufacturers.
To determine whether there was a reason to combine known elements in the manner claimed, it is often necessary to “look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art.” KSR, 550 U.S. at 418.
The Federal Circuit affirmed, holding that “the Board cannot accept general conclusions about what is ‘basic knowledge’ or ‘common sense’ as a replacement for documentary evidence for core factual findings in a determination of patentability” and stating that reliance on such conclusory statements “lacks substantial
Aytac further states that: As a standalone unit, CaTbox implements the following functions: a. print files found in a spool directory and pointed to in a queue b. receive faxes and print them or store them on CaTdisc c. send faxes driven by keypad d. receive voice mail and store them on CaTdisc e. play voice mail back driven by keypad f. copy from scanner to printer g. other functions that may be programmed such as email retrieval, faxback and data modem based TCP/IP/PPP node, dial a phone number.
cite Cite Document
1 2 3 4 5 6 7 >>