Case IPR2016-001484
`Patent 9,025,590
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`Paper No. 9
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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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`TELEFONAKTIEBOLAGET LM ERICSSON AND ERICSSON INC.
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`Petitioners,
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`v.
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`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
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`Patent Owner.
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`________________
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`Case IPR2016-01484
`Patent Number: 9,025,590
`________________
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`JOINT MOTION OF PETITIONER AND PATENT OWNER TO
`TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. §42.74
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`Patent 9,025,590
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`Paper No. 9
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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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`TELEFONAKTIEBOLAGET LM ERICSSON AND ERICSSON INC.
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`Petitioners,
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`v.
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`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
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`Patent Owner.
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`________________
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`Case IPR2016-01484
`Patent Number: 9,025,590
`________________
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`JOINT MOTION OF PETITIONER AND PATENT OWNER TO
`TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. §42.74
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`Paper No. 9
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`Case IPR2016-001484
`Patent 9,025,590
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and the Board’s authorization
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`provided on January 3, 2017, Petitioner Telefonaktiebolaget LM Ericsson and
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`Ericsson Inc. (collectively, “Petitioner” or “Ericsson”) and Patent Owner Cellular
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`Communications Equipment LLC (“Patent Owner” or “CCE”) (collectively the
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`“Parties”) jointly request dismissal of Inter Partes Review No. IPR2016-01484
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`pursuant to settlement. As there are no other petitioners in this proceeding and the
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`proceeding is still at an early stage, the Parties respectfully submit that termination
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`of this proceeding is appropriate.
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`STATEMENT OF FACTS
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`Petitioner filed their petition in this proceeding for Inter Partes Review of
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`U.S. Patent No. 9,025,590 (the “’590 Patent”) on July 25, 2016. No other petitions
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`related to the ’590 Patent are pending.
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`Patent Owner filed its Preliminary Response to the Petition on November 14,
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`2016. Petitioner and Patent Owner have reached a Settlement Agreement to end
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`their disputes in this proceeding and the underlying litigation. Pursuant to 35 U.S.C.
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`§ 317(b) and 37 CFR § 42.74(b), the agreement between the Parties is in writing,
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`constitutes the entire understanding and agreement between the Parties, and a copy
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`of the Settlement Agreement is submitted herewith as Exhibit 2030.
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`Case IPR2016-001484
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`The Parties jointly request that the Settlement Agreement filed as Exhibit
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`2030 be treated as business confidential information and kept separate from the
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`underlying patent file, as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c),
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`to maintain confidentiality of the settlement agreement.
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`ARGUMENT
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`A joint motion to terminate generally “must (1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
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`28, 2014).
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`The Board should terminate this proceeding as the Parties jointly request, for
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`the following reasons.
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`1. Brief Explanation as to Why Termination Is Appropriate
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`The Parties have met the statutory requirement that they file a “joint request”
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`to terminate before the office “has decided the merits of the proceeding.” 35
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`U.S.C. § 317(a). The proceeding is still at an early stage. Patent Owner filed its
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`Preliminary Response on November 14, 2016, and no decision regarding
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`Paper No. 9
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`Case IPR2016-001484
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`institution has been entered by the Board. No prior motions are pending in this
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`proceeding except for a pro hac vice motion.
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`The Parties have reached a settlement as to the ’590 Patent to end this
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`dispute. A copy of the confidential Settlement Agreement pertaining to this case is
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`filed concurrently herewith. See Ex. 2030. The Parties further jointly certify that
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`there is no other agreement or understanding between them, including any other
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`collateral agreements, made in connection with, or in contemplation of, the
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`termination of the instant proceeding as set forth in 35 U.S.C. § 317(b).
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`The Parties respectfully submit that termination of this proceeding is
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`appropriate because (a) this proceeding is at an early stage and no motions are
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`outstanding; (b) the Parties have reached agreement to end their dispute concerning
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`the ’590 Patent; (c) the Parties have agreed to dismiss the related district court
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`litigations with respect to the ’590 Patent; (d) the Parties agree that this Inter
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`Partes Review should be terminated; and (e) termination of this proceeding will
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`preserve the Board’s resources and obviate the need for any more Board
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`involvement in this matter.
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`2. Identity and Status of Parties in Related Litigation Involving the Patent
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`The ’590 Patent is in dispute in Cellular Communications Equipment LLC v.
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`AT&T Inc. et al., Civil Action No. 2:15-cv-00576 (E.D. Texas) (Consolidated Lead
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`Case); Cellular Communications Equipment LLC v. Sprint Corporation, et al.,
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`Civil Action No. 2:15-cv-00579 (E.D. Texas); Cellular Communications
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`Equipment LLC v. T-Mobile USA, Inc., et al., Civil Action No. 2:15-cv-00580
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`(E.D. Texas); and Cellular Communications Equipment LLC v. Verizon
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`Communications, Inc., et al., Civil Action No. 2:15-cv-00581 (E.D. Texas). These
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`cases are still being litigated. There are no other current or contemplated pending
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`litigation proceedings involving the ’590 Patent.
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` 3.
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`Identity and Status of Any Related Proceedings Before the Office
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`No other proceedings related to the ’590 Patent are pending before the
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`Office.
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`CONCLUSION
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`For at least the foregoing reasons, Petitioner and Patent Owner respectfully
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`request dismissal of this Inter Partes Review.
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`Paper No. 9
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`Respectfully Submitted,
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`/s/ Matthew C. Juren
`Matthew C. Juren
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`Registration No. 68,233
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 806-3816
`Email: matthew@nelbum.com
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`ATTORNEYS FOR PATENT OWNER
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`/s/ Michael B. Eisenberg
`Michael B. Eisenberg (Reg. No. 50,643)
`michael.eisenberg@hklaw.com
`HOLLAND & KNIGHT LLP
`31 West 52nd Street
`New York, NY 10019
`Telephone: (212)513-3200
`Facsimile: (212)385-9010
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`Counsel for Ericsson Inc. and
`Telefonaktiebolaget LM Ericsson
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`Case IPR2016-001484
`Patent 9,025,590
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`Dated: January 4, 2016
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`Paper No. 9
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`CERTIFICATE OF SERVICE
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`Case IPR2016-001484
`Patent 9,025,590
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`I hereby certify that on this 4th day of January 2017, a copy of the JOINT
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`MOTION OF PETITIONER AND PATENT OWNER TO TERMINATE
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`PROCEEDING PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74 has
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`been served in its entirety via email on the following:
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`Michael B. Eisenberg
`Reg. No. 50,463
`Michael.eisenberg@hklaw.com
`31 West 52nd Street
`New York, NY 10019
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`Jacob K. Baron
`Reg. No. 48,961
`Jacob.baron@hklaw.com
`10 St. James Avenue, 11th Floor
`Boston, MA 02116
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`Respectfully Submitted,
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`/s/ Matthew C. Juren
`Matthew C. Juren
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`Registration No. 68,233
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 806-3816
`Email: matthew@nelbum.com
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`7
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`Dated: January 4, 2017
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