Trials@uspto.gov Paper No. 11
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`571-272-7822
`Date Entered: September 24, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`HUAWEI TECHNOLOGIES CO., LTD. and HUAWEI ENTERPRISE USA,
`Petitioner,
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`v.
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`SPHERIX INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2015-01390
`Patent 7,664,123 B2
`____________
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`
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`Before MICHAEL R. ZECHER, JENNIFER MEYER CHAGNON, and
`DANIEL J. GALLIGAN Administrative Patent Judges.
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`CHAGNON, Administrative Patent Judge.
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`DECISION
`Termination of the Proceeding
`37 C.F.R. §§ 42.72, 42.74
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`

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`IPR2015-01390
`Patent 7,664,123 B2
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`On September 18, 2015, the parties filed a Joint Motion to Terminate this
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`proceeding (Paper 9), a copy of the parties’ settlement agreement (Ex. 1008), and a
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`Motion to Seal the settlement agreement (Paper 8). After reviewing the settlement
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`agreement submitted by the parties, we informed the parties via email
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`correspondence on September 21, 2015, that these papers were insufficient because
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`the settlement agreement was redacted. See 35 U.S.C. § 317(b) (requiring a “true
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`copy” of a settlement agreement be filed in the Office before the termination of an
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`inter partes review); see also APTwater, Inc. v. ThinkVillage-Kerfoot, LLC, Cases
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`IPR2014-00132, IPR2014-00133, slip op. at 2 (PTAB June 10, 2014) (Paper 17)
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`(“A redacted version of the settlement agreement will not be accepted as a true
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`copy of the settlement agreement.”). We instructed the parties to file a non-
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`redacted version of the settlement agreement. On September 21, 2015, the parties
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`complied with our instructions by filing a renewed Joint Motion to Terminate
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`(Paper 10), and a true copy of the parties’ settlement agreement (Ex. 1009).1 The
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`renewed Joint Motion to Terminate also included a joint request to treat the
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`settlement agreement as business confidential information under 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(c). Paper 10, 4.
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`This proceeding is still in its preliminary stages. Patent Owner, Spherix
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`Incorporated, has not filed a Preliminary Response, and we have not yet entered a
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`decision whether or not to institute an inter partes review. In the renewed Joint
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`Motion to Terminate this proceeding, the parties represent that they have also
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`settled the related district court case involving U.S. Patent No. 7,664,123 B2 (“the
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`’123 patent”). Paper 10, 3. The parties also indicate that the ’123 patent is not
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`involved in any other proceedings currently before the Office. Id. Under these
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`1 The first-filed Joint Motion to Terminate this proceeding (Paper 9) and redacted
`settlement agreement (Ex. 1008) will be expunged from the record of this
`proceeding.
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`2
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`

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`IPR2015-01390
`Patent 7,664,123 B2
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`circumstances, we determine that it is appropriate to terminate this proceeding
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`without rendering any further decisions. See 37 C.F.R. § 42.72.
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`Accordingly, it is:
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`ORDERED that the Motion to Seal Exhibit 1009 is GRANTED, and the
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`parties’ request that the settlement agreement (Ex. 1009) be treated as business
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`confidential information, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c), is GRANTED;
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`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.7(a), Paper 9 and
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`Exhibit 1008 are EXPUNGED from the record of the instant proceeding; and
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`FURTHER ORDERED that the parties’ renewed Joint Motion to Terminate
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`this proceeding is GRANTED, and this proceeding is hereby terminated.
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`

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`IPR2015-01390
`Patent 7,664,123 B2
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`PETITIONER:
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`M. Scott Fuller
`Roy Hardin
`Paul Lein
`Darrian Campbell
`Locke Lord LLP
`sfuller@lockelord.com
`rhardin@lockelord.com
`plein@lockelord.com
`dcampbell@lockelord.com
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`
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`PATENT OWNER:
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`Donald McPhail
`Carl B. Wischhusen
`Cozen O’Connor
`DMcphail@cozen.com
`CWischhusen@cozen.com
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