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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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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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9 Order: Scheduling Order

Document IPR2017-00713, No. 9 Order - Scheduling Order (P.T.A.B. Jul. 17, 2017)

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8 Institution Decision: Trial Instituted Document

Document IPR2017-00713, No. 8 Institution Decision - Trial Instituted Document (P.T.A.B. Jul. 17, 2017)

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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)

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15 Motion: JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS...

Document IPR2017-00713, No. 15 Motion - JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL INFORMATION AND TO MAINTAIN SAID AGREEMENT SEPARATE FRO...

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14 Motion: JOINT MOTION TO TERMINATE PURSUANT TO 35 USC 317 AND 37 CF...

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)

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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)

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