UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`
`__________________
`
`
`Case IPR2018-00727
`U.S. Patent No. 6,628,629
`
`__________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
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`
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
`
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`
`__________________
`
`
`Case IPR2018-00727
`U.S. Patent No. 6,628,629
`
`__________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`Case No. IPR2018-00727
`Patent 6,628,629
`
`
`Petitioners Telefonaktiebolaget LM Ericsson and Ericsson Inc. and Patent
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`
`
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`Owner Intellectual Ventures I LLC have reached a settlement agreement and
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`jointly request termination of IPR2018-00727 under 35 U.S.C. § 317(a). The
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`Board authorized the filing of this motion on June 12, 2019.
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`I.
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`Statement of Relief Requested
`Due to a settlement, Petitioners and Patent Owner jointly request termination
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`of IPR2018-00727 under 35 U.S.C. § 317(a).
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`II.
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`Statement of Facts
`Petitioners and Patent Owner have reached an agreement to settle this inter
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`partes review proceeding. Petitioners and Patent Owner are filing the settlement
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`agreement concurrently with this motion, along with a “Joint Request That the
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`Settlement Agreement Be Treated as Business Confidential and Key Separate
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`Under 35 U.S.C. § 317(b).” A joint motion to terminate generally must “(1)
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`include a brief explanation as to why termination is appropriate; (2) identify all
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`parties in any related litigation involving the patents at issue; (3) identify any
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`related proceedings currently before the Office; and (4) discuss specifically the
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`current status of each such related litigation or proceeding with respect to each
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`party to the litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc.,
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`IPR2014-00018, Paper 26 at 2 (P.T.A.B. July 28, 2014).
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`
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`
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`1
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`
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`
`
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`Case No. IPR2018-00727
`Patent 6,628,629
`
`
`
`(1) Brief Explanation.
`Termination is appropriate in this case because the parties have settled their
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`dispute. A “Joint Request That the Settlement Agreement Be Treated as Business
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`Confidential and Kept Separate Under 35 U.S.C. § 317(b)” is being filed
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`concurrently with this motion.
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`
`
`
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`(2) Related Litigation.
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`The parties completed a district court trial on the ’629 Patent in February
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`2019. Intellectual Ventures I LLC v. Telefonaktiebolaget LM Ericsson et al., No.
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`2:17-cv-00577-JRG (E.D. Tex.).
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`
`
`
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`(3) Related Proceedings Before the Office.
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`Petitioners and Patent Owner are not aware of other inter partes review
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`proceedings involving the ’629 Patent. Petitioners and Patent Owner are aware of
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`the following pending inter parties review proceedings involving patents related to
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`the ’629 Patent: Ericsson Inc. v. Intellectual Ventures I LLC, IPR2018-00758
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`(P.T.A.B.) (RE46,206); Ericsson Inc. v. Intellectual Ventures I LLC, IPR2018-
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`00782 (P.T.A.B.) (RE46,206); Ericsson Inc. v. Intellectual Ventures I LLC,
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`IPR2018-01121 (P.T.A.B.) (RE46,206); Ericsson Inc. v. Intellectual Ventures I
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`LLC, IPR2018-01256 (P.T.A.B.) (RE46,206); Ericsson Inc. v. Intellectual
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`Ventures I LLC, IPR2018-01318 (P.T.A.B.) (RE46,206); Ericsson Inc. v.
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`
`
`
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`2
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`
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`
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`Case No. IPR2018-00727
`Patent 6,628,629
`
`
`Intellectual Ventures I LLC, IPR2018-01007 (P.T.A.B.) (U.S. Patent No.
`
`
`
`
`7,412,517); and Ericsson Inc. v. Intellectual Ventures I LLC, IPR2018-01058
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`(P.T.A.B.) (U.S. Patent No. 7,359,971).
`
`
`
`
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`(4) Status of Related Litigation and Proceedings Before the Office.
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`Post-trial briefing in the related district court proceeding is incomplete. The
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`Board has instituted trial in all of the above-referenced inter partes review
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`proceedings.
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`III. Argument
`The Board should terminate this inter partes review for the following
`
`reasons.
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`First, Petitioners and Patent Owner have met the statutory requirement that
`
`they file a “joint request” to terminate before the Office “has decided the merits of
`
`the proceeding.” 35 U.S.C. § 317(a). Under § 317(a), an inter partes review
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`“shall” be terminated up a joint request “unless the Office has decided the merits of
`
`the proceeding before the request for termination is filed.” There are no other
`
`preconditions of § 317(a).
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`Second, the parties have reached a settlement as to all the disputes in this
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`proceeding. A true copy of the settlement agreement is filed concurrently
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`herewith. See Paper No. 27. The parties request that the settlement agreement be
`
`
`
`
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`3
`
`
`
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`
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`Case No. IPR2018-00727
`Patent 6,628,629
`
`
`treated as business confidential information and be kept separate from the files of
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`
`
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`this proceeding in accordance with 37 C.F.R. § 42.74(c). No other such
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`agreements, written or oral, exist between or among the parties.
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`Accordingly, the parties in the present proceeding jointly certify that there
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`are no other written or oral agreements or understandings, including any collateral
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`agreements, between them, including but not limited to licenses, covenants not to
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`sue, confidentiality agreements, payment agreements, or other agreements of any
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`kind, that are made in connection with or in contemplation of, the termination of
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`this proceeding.
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`Third, a termination of this proceeding will conserve the Board’s resources
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`and obviate the need for any more Board involvement in this matter.
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`IV. Conclusion
`For these reasons, Petitioners and Patent Owner respectfully request
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`termination of this inter partes review of the ’629 Patent.
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`
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`4
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`Dated: June 13, 2019
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`
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`Case No. IPR2018-00727
`Patent 6,628,629
`
`
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`
` /s / Brian W. Oaks
`Brian W. Oaks (Reg. No. 44,981)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`Phone: (512) 322-2500
`Facsimile: (512) 322-2501
`
`Megan LaDriere (Reg. No. 75,995)
`Jeffery S. Becker (Reg. No. 68,533)
`Baker Botts L.L.P.
`2001 Ross Avenue, Ste 900
`Dallas, Texas 75201
`Phone: (214) 953-6500
`Facsimile: (214) 953-6503
`
`ATTORNEYS FOR PETITIONERS
`
`
`
`Respectfully submitted,
`
` /s / Peter J. McAndrews
`Peter J. McAndrews (Reg. No. 38,547)
`McAndrews, Held, and Malloy, Ltd.
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`Sharon A. Hwang (Reg. No. 39,717)
`McAndrews, Held, and Malloy, Ltd.
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`
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`
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`Case No. IPR2018-00727
`Patent 6,628,629
`
`
`
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`Andrew B. Karp (Reg. No. 61,586)
`McAndrews, Held, and Malloy, Ltd.
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`Michael J. Carrozza (Reg. No. 66,980)
`McAndrews, Held, and Malloy, Ltd.
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`Russell J. Rigby (Reg. No. 50,267)
`Intellectual Ventures Management
`Building 4
`3150 139th Avenue SE
`Bellevue, WA 98005
`Telephone: (425) 495-8628
`Facsimile: (425) 467-2350
`
`James Hietala (Reg. No. 51,802)
`Intellectual Ventures Management
`Building 4 3150 139th Avenue SE
`Bellevue, WA 98005
`Telephone: (425) 283-4789
`Facsimile: (425) 467-2350
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`ATTORNEYS FOR PATENT OWNER
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`Case No. IPR2018-00727
`Patent 6,628,629
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on June 13, 2019 pursuant to 37 C.F.R.
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`§§ 42.6(e) and 42.105(b), a copy of this Joint Motion to Terminate was served on
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`Patent Owner’s counsel via email at the following correspondence addresses:
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` ERICSSON@mcandrews-ip.com
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`Dated: June 13, 2019
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`
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`
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`
` /s / Brian W. Oaks
`Brian W. Oaks (Reg. No. 44,981)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`Phone: (512) 322-2500
`Facsimile: (512) 322-2501
`
`Megan LaDriere (Reg. No. 75,995)
`Jeffery S. Becker (Reg. No. 68,533)
`Baker Botts L.L.P.
`2001 Ross Avenue, Ste 900
`Dallas, Texas 75201
`Phone: (214) 953-6500
`Facsimile: (214) 953-6503
`
`ATTORNEYS FOR PETITIONERS
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