Case IPR2016-01486
`Patent 9,078,262
`
`
`
`
`Paper No. 10
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`TELEFONAKTIEBOLAGET LM ERICSSON AND ERICSSON INC.,
`
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`
`Patent Owner.
`
`________________
`
`Case IPR2016-01486
`Patent Number: 9,078,262
`________________
`
`
`
`
`
`JOINT MOTION OF PETITIONER AND PATENT OWNER TO
`TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. §42.74
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`Patent 9,078,262
`
`
`
`
`Paper No. 10
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`TELEFONAKTIEBOLAGET LM ERICSSON AND ERICSSON INC.,
`
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`
`Patent Owner.
`
`________________
`
`Case IPR2016-01486
`Patent Number: 9,078,262
`________________
`
`
`
`
`
`JOINT MOTION OF PETITIONER AND PATENT OWNER TO
`TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. §42.74
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`
`Case IPR2016-01486
`Patent 9,078,262
`
`
`
`
`Paper No. 10
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and the Board’s authorization
`
`provided on January 3, 2017, Petitioner Telefonaktiebolaget LM Ericsson and
`
`Ericsson Inc. (collectively, “Petitioner” or “Ericsson”) and Patent Owner Cellular
`
`Communications Equipment LLC (“Patent Owner” or “CCE”) (collectively the
`
`“Parties”) jointly request dismissal of Inter Partes Review No. IPR2016-01486
`
`pursuant to settlement. As there are no other petitioners in this proceeding and the
`
`proceeding is still at an early stage, the Parties respectfully submit that termination
`
`of this proceeding is appropriate.
`
`STATEMENT OF FACTS
`
`Petitioner filed their petition in this proceeding for Inter Partes Review of
`
`U.S. Patent No. 9,078,262 (the “’262 Patent”) on July 26, 2016. No other petitions
`
`related to the ’262 Patent are pending.
`
`Patent Owner filed its Preliminary Response to the Petition on November 14,
`
`2016. Petitioner and Patent Owner have reached a Settlement Agreement to end
`
`their disputes in this proceeding and the underlying litigation. Pursuant to 35 U.S.C.
`
`§ 317(b) and 37 CFR § 42.74(b), the agreement between the Parties is in writing,
`
`constitutes the entire understanding and agreement between the Parties, and a copy
`
`of the Settlement Agreement is submitted herewith as Exhibit 2002.
`
`
`
`2
`
`
`
`Case IPR2016-01486
`Patent 9,078,262
`
`The Parties jointly request that the Settlement Agreement filed as Exhibit
`
`Paper No. 10
`
`
`
`2002 be treated as business confidential information and kept separate from the
`
`underlying patent file, as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c),
`
`to maintain confidentiality of the settlement agreement.
`
`ARGUMENT
`
`A joint motion to terminate generally “must (1) include a brief explanation as
`
`to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents 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 with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
`
`28, 2014).
`
`The Board should terminate this proceeding as the Parties jointly request, for
`
`the following reasons.
`
`1. Brief Explanation as to Why Termination Is Appropriate
`
`The Parties 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). The proceeding is still at an early stage. Patent Owner filed its Preliminary
`
`Response on November 14, 2016, and no decision regarding institution has been
`
`
`
`3
`
`
`
`Case IPR2016-01486
`Patent 9,078,262
`
`entered by the Board. No prior motions are pending in this proceeding except for a
`
`Paper No. 10
`
`
`
`pro hac vice motion.
`
`The Parties have reached a settlement as to the ’262 Patent to end this dispute.
`
`A copy of the confidential Settlement Agreement pertaining to this case is filed
`
`concurrently herewith. See Ex. 2002. The Parties further jointly certify that there is
`
`no other agreement or understanding between them, including any other collateral
`
`agreements, made in connection with, or in contemplation of, the termination of the
`
`instant proceeding as set forth in 35 U.S.C. § 317(b).
`
`The Parties respectfully submit that termination of this proceeding is
`
`appropriate because (a) this proceeding is at an early stage and no motions are
`
`outstanding; (b) the Parties have reached agreement to end their dispute concerning
`
`the ’262 Patent; (c) the Parties have agreed to dismiss the related district court
`
`litigations with respect to the ’262 Patent; (d) the Parties agree that this Inter Partes
`
`Review should be terminated; and (e) termination of this proceeding will preserve
`
`the Board’s resources and obviate the need for any more Board involvement in this
`
`matter.
`
`2. Identity and Status of Parties in Related Litigation Involving the Patent
`
`The ’262 Patent is in dispute in Cellular Communications Equipment LLC v.
`
`AT&T Inc. et al., Civil Action No. 2:15-cv-00576 (E.D. Texas) (Consolidated Lead
`
`Case); Cellular Communications Equipment LLC v. Sprint Corporation, et al., Civil
`4
`
`
`
`
`
`Case IPR2016-01486
`Patent 9,078,262
`
`Action No. 2:15-cv-00579 (E.D. Texas); Cellular Communications Equipment LLC
`
`Paper No. 10
`
`
`
`v. T-Mobile USA, Inc., et al., Civil Action No. 2:15-cv-00580 (E.D. Texas); and
`
`Cellular Communications Equipment LLC v. Verizon Communications, Inc., et al.,
`
`Civil Action No. 2:15-cv-00581 (E.D. Texas). These cases are still being litigated.
`
`There are no other current or contemplated pending litigation proceedings involving
`
`the ’262 Patent.
`
` 3.
`
`Identity and Status of Any Related Proceedings Before the Office
`
`No other proceedings related to the ’262 Patent are pending before the Office.
`
`CONCLUSION
`
`For at least the foregoing reasons, Petitioner and Patent Owner respectfully
`
`request dismissal of this Inter Partes Review.
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`Paper No. 10
`
`Respectfully Submitted,
`
`/s/ Matthew C. Juren
`Matthew C. Juren
`
`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
`
`
`
`ATTORNEYS FOR PATENT OWNER
`
`
`
`/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
`
`Counsel for Ericsson Inc. and
`Telefonaktiebolaget LM Ericsson
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01486
`Patent 9,078,262
`
`Dated: January 4, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`Case IPR2016-01486
`Patent 9,078,262
`
`
`
`
`Paper No. 10
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 4th day of January 2017, a copy of 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 has been
`
`served in its entirety via email on the following:
`
`Respectfully Submitted,
`
`/s/ Matthew C. Juren
`Matthew C. Juren
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`Michael B. Eisenberg
`Reg. No. 50,463
`Michael.eisenberg@hklaw.com
`31 West 52nd Street
`New York, NY 10019
`
`Jacob K. Baron
`Reg. No. 48,961
`Jacob.baron@hklaw.com
`10 St. James Avenue, 11th Floor
`Boston, MA 02116
`
`Dated: January 4, 2017
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
