`571.272.7822
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` Paper No. 8
` Filed: December 1, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC
`Patent Owner.
`____________
`
`IPR2015-01682 (Patent 7,764,231)1
`IPR2015-01684 (Patent 7,764,231)
`IPR2015-01686 (Patent 7,764,231)
`IPR2015-01709 (Patent 7,525,484)
`____________
`
`
`
`Before KEVIN F. TURNER, RICHARD E. RICE, DAVID C. MCKONE,
`JAMES A. TARTAL, BARBARA A. PARVIS, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Joint Motions to Terminate
`37 C.F.R. § 42.71
`
`
`1 The parties are not authorized to use this case caption, or to file
`consolidated papers.
`
`
`
`On November 24, 2015, the parties filed a Joint Motion to Terminate
`Proceedings in each of the above cited proceedings, as well as a Joint
`Submission of Narrowing Agreement in each (IPR2015-01682, Papers 8 and
`9; IPR2015-01684, IPR2015-01686, and IPR2015-01709, Papers 6 and 7, in
`each proceeding), with joint requests to treat as confidential the submitted
`Narrowing Agreement (Exhibit 2001, in each proceeding).2
`Under 35 U.S.C. § 317(a), applicable to inter partes review
`proceedings, a 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. These matters are in the preliminary stage. Patent
`Owner has not filed Preliminary Responses in any of the indicated cases, and
`decisions whether to institute trial have not been issued in any of the cases.
`Under 35 U.S.C. § 317(b), any agreement or understanding between
`the Patent Owner and a Petitioner, including any collateral agreements
`referred to in such agreement or understanding, made in connection with, or
`in contemplation of, the termination of the proceeding, shall be in writing,
`and a true copy of such agreement or understanding shall be filed in the
`Office. The Narrowing Agreement appears to be a true copy of the
`agreement between the parties, specifies all of the affected Petitions, and
`identifies the claims that will continue to be asserted in the infringement
`action between the parties, limiting the set of claims previously asserted to
`be infringed. Ex. 2001. None of the identified claims are the subject of the
`Petitions in the proceedings that the parties seek to terminate.
`
`
`2 The Motions and supporting documents are substantially identical in each
`case. Thus, for ease of reference we will refer to the filings in IPR2015-
`01682.
`
`
`
`Under these circumstances, we determine that it is appropriate to
`dismiss the Petitions. See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does
`not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
`Accordingly, it is
`ORDERED that the Joint Motions to Terminate Proceedings, filed in
`IPR2015-01682, IPR2015-01684, IPR2015-01686, and IPR2015-01709, are
`GRANTED; and
`FURTHER ORDERED that the Narrowing Agreement, Exhibit 2001,
`be treated as business confidential information, be designated “Board Only,”
`and be kept separate from the files of the involved patents.
`.
`
`
`
`PETITIONER:
`Brian W. Oaks
`Douglas M. Kubehl
`Chad C. Walters
`Ross G. Culpepper
`BAKER BOTTS LLP
`brian.oaks@bakerbotts.com
`doug.kubehl@bakerbotts.com
`chad.walters@bakerbotts.com
`ross.culpepper@bakerbotts.com
`
`PATENT OWNER:
`Sean Luner
`DOVEL AND LUNER, LLP
`sean@dovellaw.com
`
`Steven C. Sereboff
`SOCAL IP LAW GROUP LLP.
`ssereboff@.socalip.com
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