Trials@uspto.gov
`571-272-7822
`
`Paper No. 11
`Entered: January 6, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TELEFONAKTIEBOLAGET LM ERICSSON and ERICSSON INC.,1
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01484, Patent 9,025,590 B2
`Case IPR2016-01485, Patent 8,867,472 B2
`Case IPR2016-01486, Patent 9,078,262 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, BRYAN F. MOORE, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Joint Motion to Terminate
`37 C.F.R. § 42.5(a), 42.74
`
`
`
`
`1 As identified in the above caption, this Decision is directed to three separate
`proceedings, respectively the ’1484 IPR, the ’1485 IPR, and the ’1486 IPR
`(collectively “the Ericsson IPRs”). The caption is not authorized for use by
`any of the parties without the permission of the panel.
`1
`
`
`
`

`
`Case IPR2016-01484 (Patent 9,025,590 B2)
`Case IPR2016-01485 (Patent 8,867,472 B2)
`
`Case IPR2016-01486 (Patent 9,078,262 B2)
`
`On January 4, 2017, Telefonaktiebolaget LM Ericsson and Ericsson
`Inc. (“Petitioner” or “Ericsson”) and Cellular Communications Equipment
`LLC (“Patent Owner”), filed a “Joint Motion of Petitioner and Patent Owner
`to Terminate Proceeding Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §42.74”
`in each of the Ericsson IPRs (“Motion,” “Mot.,” respectively Papers 9, 11, and
`10)2 based on a settlement that resolves the parties’ disputes related to the
`challenged patents. The parties concurrently filed a true copy of a “Settlement
`and Patent License Agreement” (“Settlement Agreement,” respectively
`Exhibits 2030, 2002, and 2002), which resolves the parties dispute with
`respect to the Ericsson IPRs and Patent Owner’s suits against Petitioner for
`patent infringement in the United States District Court for the Eastern District
`of Texas in Civil Action Nos. 2:15-cv-00576, 2:15-cv-00579, 2:15-cv-00580
`and 2:15-cv-00581 (the “lawsuits”). Mot. 2. The parties represent that they
`“have agreed to dismiss the related district court litigations with respect to the
`[challenged patents].” Id. at 4.
`In the Motion, the parties request that the Settlement Agreement be
`treated as business confidential information and be kept separate from the
`underlying files of the challenged patents, as provided in 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c) (“A party to a settlement may request that the
`settlement be treated as business confidential information and be kept separate
`from the files of an involved patent or application.”). Mot. 3. On January 4,
`2017, the parties also filed a “Joint Motion of Petitioner and Patent Owner to
`File Settlement Agreement as Business Confidential Information Pursuant to
`35 U.S.C. § 317 and 37 C.F.R. §42.74” in each of the Ericsson IPRs
`(respectively Papers 10, 12, and 11) specifically requesting the Settlement
`
`
`2 The Motions and Settlement Agreement filed in the Ericsson IPRs are
`substantially identical and, unless otherwise stated, hereafter we reference
`only the filings in the ’1484 IPR.
`
`2
`
`
`
`

`
`Case IPR2016-01484 (Patent 9,025,590 B2)
`Case IPR2016-01485 (Patent 8,867,472 B2)
`
`Case IPR2016-01486 (Patent 9,078,262 B2)
`Agreement be filed “as Business Confidential Information, which shall be
`kept separate from the file of the involved patent.” Paper 10, 2.
`The Parties also certify that there are no collateral agreements or
`understandings made in connection with, or in contemplation of, the
`termination of the Ericsson IPRs. Mot. 4. The status of all pending litigation
`involving the challenged patents has been provided. Id. at 4–5.
`We have not yet entered a decision on institution in any of the Ericsson
`IPRs. Under these circumstances, we determine that it is appropriate to
`terminate the proceedings. See 37 C.F.R. §§ 42.5(a), 42.72. This paper does
`not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
`ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion of Petitioner and Patent Owner to
`Terminate Proceeding Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §42.74
`(respectively Papers 9, 11, and 10) is granted as to each of the Ericsson IPRs;
`FURTHER ORDERED that the Joint Motion of Petitioner and Patent
`Owner to File Settlement Agreement as Business Confidential Information
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §42.74 (respectively Papers 10, 12,
`and 11) is granted as to each of the Ericsson IPRs and the Settlement
`Agreement (respectively Exhibits 2030, 2002, and 2002) shall be treated as
`business confidential information, shall be kept separate from the files of the
`involved U.S. Patent Nos. 9,025,590 B2; 8,867,472 B2; and 9,078,262 B2, and
`shall be made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause; and
`FURTHER ORDERED that a copy of this Decision shall be filed in
`each of the Ericsson IPRs (IPR2016-01484, IPR2016-01485, and IPR2016-
`01486).
`
`
`
`
`
`
`
`
`
`3
`
`

`
`
`
`Case IPR2016-01484 (Patent 9,025,590 B2)
`Case IPR2016-01485 (Patent 8,867,472 B2)
`Case IPR2016-01486 (Patent 9,078,262 B2)
`
`For PETITIONER:
`
`Jacob Baron
`Allison Lucier
`Michael Eisenberg
`HOLLAND & KNIGHT LLP
`jacob.baron@hklaw.com
`allison.lucier@hklaw.com
`michael.eisenberg@hklaw.com
`
`For PATENT OWNER:
`
`Matthew Juren
`Barry Bumgardner
`Donald Puckett
`NELSON BUMGARDNER, P.C.
`matthew@nelbum.com
`barry@nelbum.com
`puckett@nelbum.com
`
`
`
`
`4