IPR2015-01390
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`HUAWEI TECHNOLOGIES CO., LTD and HUAWEI ENTERPRISE USA
`
`Petitioners,
`
`v.
`
`SPHERIX INCORPORATED
`
`Patent Owner.
`
`____________
`
`Case IPR2015-01390
`
`Patent 7,664,123
`
`__________________
`JOINT MOTION TO TERMINATE PROCEEDING
`
`AND
`
`JOINT REQUEST TO TREAT SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL UNDER
`35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`HUAWEI TECHNOLOGIES CO., LTD and HUAWEI ENTERPRISE USA
`
`Petitioners,
`
`v.
`
`SPHERIX INCORPORATED
`
`Patent Owner.
`
`____________
`
`Case IPR2015-01390
`
`Patent 7,664,123
`
`__________________
`JOINT MOTION TO TERMINATE PROCEEDING
`
`AND
`
`JOINT REQUEST TO TREAT SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL UNDER
`35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`
`IPR2015-01390
`
`RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a), Petitioners Huawei Technologies Co., LTD and Huawei
`
`Enterprise USA (“Huawei”) and Patent Owners Spherix Incorporated and NNPT, LLC.
`
`(“Spherix”) jointly request termination of the Inter Partes Review of U.S. Patent No. 7,664,123,
`
`Case No. IPR2015-01390.
`
`REASONS FOR GRANTING THE MOTION
`
`Generally, the Board expects that a proceeding will terminate after the filing of a
`
`settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`
`(Aug. 14, 2012).
`
`The Board authorized the filing of the instant joint motion and request in an email dated
`
`September 15, 2015. In that email, the Board set a date of September 23, 2015 for the filing of
`
`this motion and the settlement agreement. In a further email, dated September 16, 2015, the
`
`Board indicated that the panel is aware that the parties intend to file this motion and settlement
`
`agreement. The email of September 16 further indicates that the panel intends to wait to receive
`
`the motions before acting on the case.
`
`IPR2013-00428, Paper No. 56, provides guidance as to the content of a motion to
`
`terminate. There, the Board indicates that a joint motion, such as this one, should (1) include a
`
`brief explanation as to why termination is appropriate; (2) identify all parties in any related
`
`litigation involving the patent 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
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`with respect to each party to the litigation or proceeding. Id. at 2. This motion satisfies each of the
`
`above requirements and is accompanied by a true copy of the Parties’ fully-executed settlement
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`agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`
`
`
`
`2
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`
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`IPR2015-01390
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`(1)
`
`Brief Explanation of Why Termination is Appropriate.
`
`Petitioners filed their petition for Inter Partes Review on June 11, 2015. Patent Owner
`
`has not filed a preliminary response, and one is not due until September 26, 2015. Termination is
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`appropriate because the Parties have settled their dispute and reached agreement to terminate this
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`Inter Partes Review proceeding, and this Inter Partes Review has not been instituted.
`
`(2)
`
`All Parties in Any Pending Related Litigation Involving the Patent at Issue.
`
`Petitioners and Patent Owner are parties in a related district court litigation, Huawei
`
`Investment & Holding Co., Ltd.; Huawei Technologies Co., Ltd.; Huawei Device (Hong Kong)
`
`Co., Ltd.; Huawei Device USA Inc.; Huawei Technologies USA Inc.; Huawei Technologies
`
`Cooperatif U.A. and Futurewei Technologies, Inc., Civil Action No. 2:14-cv-677 (E.D. Texas),
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`which the parties also have settled.
`
`(3)
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`Related Proceedings Currently Before the Office.
`
`Aside from this Inter Partes Review proceeding, U.S. Patent No. 7,664,123 is not
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`involved in any other proceeding currently before the Office.
`
`(4)
`
`Current Status of Each Such Related Litigation or Proceeding With Respect
`to Each Party to the Litigation or Proceeding.
`
`As indicated above, the Parties have settled their dispute in the related district court
`
`litigation.
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`SETTLEMENT AGREEMENT
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’ settlement
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`agreement has been made in writing, and a true and correct copy is being filed concurrently
`
`
`
`
`3
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`
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`IPR2015-01390
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`herewith as Exhibit A. The settlement agreement is being filed via the Patent Review Processing
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`System (PRPS) with access to “Parties and Board Only.”
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s authorization of
`
`the filing of this joint request in its email to the Parties on September 15, 2015, the Parties jointly
`
`request that the true copy of the settlement agreement filed concurrently herewith be treated as
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`business confidential information, which shall be kept separate from the file of U.S. Patent No.
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`7,664,123. The Parties further request the Board to not make the settlement agreement available to
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`any third party, except as provided for in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`CONCLUSION
`
`For all of these reasons, Petitioners and Patent Owner respectfully request termination of
`
`the Inter Partes Review of U.S. Patent No. 7,664,123, Case No. IPR 2015-01390.
`
`As stated in 35 U.S.C. § 317(a), because Petitioners and Patent Owner request this
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`termination as to Petitioners, no estoppel under 35 U.S.C. § 315(e) shall attach to Petitioners.
`
`Date: September 21, 2015
`
`
`
`
`
`Respectfully submitted,
`
`Counsel for Spherix:
`
`By: /s/ Donald McPhail
`Donald McPhail, Reg. No. 35,811
`COZEN O’CONNOR
`1627 I Street NW, Suite 1100
`Washington, DC 20006
`Phone: (202) 912-4837
`Facsimile: (202) 640-5916
`Email: DMcphail@cozen.com
`
`Counsel for Huawei:
`
`By: /s/ M. Scott Fuller
`M. Scott Fuller, Reg. No. 54716
`Locke Lord LLP
`2200 Ross Avenue, Suite 2200
`
`
`
`
`4
`
`
`
`IPR2015-01390
`
`Dallas, Texas 75201
`Tel: (214) 740-8601
`Fax: (214) 756-8601
`sfuller@lockelord.com
`
`
`
`
`
`
`5
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