`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE US, INC. and T-MOBILE USA, INC.,
`Petitioners
`
`v.
`
`HUAWEI TECHNOLOGIES CO. LTD.,
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2017-00671
`Patent 8,638,750
`____________
`
`JOINT MOTION BY PETITIONERS AND PATENT OWNER TO
`TERMINATE PROCEEDING PURSUANT TO
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`Mail Stop “PATENT BOARD” Patent
`Trial and Appeal Board U.S. Patent and
`Trademark Office P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`ActiveUS 165983212v.1
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`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioners T-Mobile
`
`US, Inc. and T-Mobile USA, Inc. (“T-Mobile” or “Petitioners”) and Patent Owner
`
`Huawei Technologies Co. LTD. (“Huawei” or “Patent Owner”) jointly request
`
`termination of the inter partes review of U.S. Patent No. 8,638,750 (“the 750
`
`Patent”), Case No. IPR2017-00671, without prejudice, and request that the
`
`settlement agreement be treated as business confidential information pursuant to 35
`
`U.S.C. § 317(b). The Board authorized the parties to file this Joint Request on
`
`December 28, 2017 via email.
`
`I.
`Termination of Case No. IPR2017-00671 Would Be Appropriate.
`Termination of IPR2017-00671 by the Board would be appropriate. The
`
`parties have executed a settlement agreement that resolves all of their disputes
`
`concerning the 750 Patent—expressly including the present IPR—and the Board
`
`has not yet conducted an oral hearing. Motions to terminate based on settlement
`
`are routinely granted in the post-institution, pre-oral hearing timeframe. See, e.g.,
`
`Oracle Amer. Inc., et al. v. Realtime Data LLC, Case IPR2016-00373 (PTAB Apr.
`
`11, 2017) (Paper 30 at 3); Nike, Inc. v. Point 3 Basketball, LLC, Case No.
`
`IPR2016-00396 (PTAB Feb. 22, 2017) (Paper 20 at 3); Amer. Megatrends, Inc., et
`
`al. v. Kinglite Holdings Inc., Case IPR2016-00114 (PTAB Dec. 13, 2016) (Paper
`
`22 at 2). Accordingly, good cause exists to terminate the proceedings based on
`
`ActiveUS 165983212v.1
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`1
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`
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`
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`settlement as the Board has not yet conducted an oral hearing or otherwise resolved
`
`the merits of the Petition.
`
`As set forth in 35 U.S.C. § 317 and 37 C.F.R. § 42.74, the agreement has
`
`been made in writing in the form of a settlement agreement executed by the parties,
`
`and a true and correct copy of that settlement agreement has been filed as Exhibit
`
`No. 1028.
`
`The parties hereby represent that the document filed as Exhibit 1028
`
`represents all agreements made in connection with, or in contemplation of, the
`
`termination of this proceeding. All such agreements have been filed with the Board
`
`as required by § 317(b) and 37 C.F.R. § 42.74(b).
`
`As stated in 35 U.S.C. § 317(a), because T-Mobile and Huawei request this
`
`termination, no estoppel under 35 U.S.C. § 315(e) shall attach as to Petitioners T-
`
`Mobile.
`
`Submitted concurrently herewith is a request by T-Mobile and Huawei that
`
`the settlement agreement be treated as business confidential information, be kept
`
`separate from the file of the involved patents, and be made available only to
`
`Federal Government agencies on written request, or to any person on a showing of
`
`good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`ActiveUS 165983212v.1
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`2
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`II. Conclusion
`Therefore, T-Mobile and Huawei respectfully request termination of the
`
`inter partes review of U.S. Patent No. 8,638,750, Case No. IPR2017-00671,
`
`without prejudice.
`
`
`
`Dated: December 29, 2017
`
`
`Dated: December 29, 2017
`
`
`
`
`
`
`
`
`
`/Joseph F. Haag/
`Joseph F. Haag
`Registration No. 42,612
`Counsel for Petitioners,
`T-Mobile US, Inc. et al.
`
`
`/W. Karl Renner/
`W. Karl Renner
`Registration No. 41,265
`Counsel for Patent Owner Huawei
`Technologies Co. LTD.
`
`
`
`ActiveUS 165983212v.1
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`3
`
`
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies
`
`that
`
`the above-captioned “JOINT
`
`MOTION BY PETITIONERS AND PATENT OWNER TO TERMINATE
`
`PROCEEDING PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74” was
`
`served in its entirety via email to the Patent Owner by serving the correspondence
`
`email addresses of record as follows:
`
`Michael T. Hawkins (IPR35548-0058IP1@fr.com)
`W. Karl Renner (AXF-PTAB@fr.com, PTABInbound@fr.com)
`Jeremy Monaldo (monaldo@fr.com)
`Roberto Devoto (devoto@fr.com)
`Stuart A. Nelson (PTABInbound@fr.com)
`Kevin K. Su (PTABInbound@fr.com)
`Conrad A. Gosen (PTABInbound@fr.com)
`IPR35548-0058IP1@fr.com (ref.: Docket No. 35548-0058IP1)
`
` /Joseph F. Haag/
`
`
`
`
`
`
`
` Joseph F. Haag
` Registration No. 42,612
`
`
`
`
`
`
`
`ActiveUS 165983212v.1
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`
`
`4
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`
`
`Exhibit
`1001
`1002
`1003
`
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`
`
`TABLE OF EXHIBITS
`Description
`U.S. Patent No. 8,638,750
`
`Declaration of Dr. Sundeep Rangan (“Rangan Decl.”)
`
`S2-072252, Handover from non-3GPP Access to E-UTRAN (TS
`23.402), Motorola, 3GPP TSG SA WG2 S2#57, April 23-27,
`2007 (“Motorola Proposal”)
`S2-071132, Handover from non 3GPP to 3GPP, Huawei, 3GPP
`TSG SA WG2 S2#56c, March 26-30, 2007 (“Huawei Proposal”)
`S2-072099, Handover Scenarios between 3GPP (EUTRA) and
`non-3GPP Access systems using S2a Reference Point with
`PMIP6, Starent, Marvell, Sprint, KDDI, 3GPP TSG SA WG2
`S2#57, April 23-27, 2007 (“Starent Proposal”)
`U.S. Published Patent Application No. 2004/0242199 (“Edlund”)
`
`S2-072255, GPRS functionality for IMS emergency services
`support, NSN, Nokia, 3GPP TSG SA WG2 S2#57, April 23-27,
`2007 (“S2-072255”)
`FTP site for documents from S2#57 working group meeting held
`in Beijing from April 23-27, 2007
`Declaration of Mr. Craig Bishop (“Bishop Decl.”)
`
`FTP Site for documents from S2#56c working group meeting
`held in Warsaw from March 26-30, 2007
`S2-072182, PDN GW selection for LTE and non-3GPP access,
`Nokia Siemens Networks, 3GPP TSG SA WG2 S2#57, April 23-
`27, 2007 (“NSN Proposal”)
`3GPP TS 23.401 V1.0.0 (May 2007), 3rd Generation Partnership
`Project; Technical Specification Group Services and System
`Aspects; GPRS enhancements for E-UTRAN access (Release 8)
`(“3GPP TS 23.401 V1.0.0”)
`3GPP TS 23.402 V1.0.0 (May 2007), 3rd Generation Partnership
`Project; Technical Specification Group Services and System
`Aspects; Architecture Enhancements for non-3GPP accesses
`(Release 8) (“3GPP TS 23.402 V1.0.0”)
`
`ActiveUS 165983212v.1
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`5
`
`
`
`
`
`Description
`S2-071688, PDN Gateway selection, Huawei, CMCC, CATT,
`RITT, ZTE, 3GPP TSG SA WG2 S2#57, April 23-27, 2007
`(“S2-071688”)
`S2-071738, GW selection for LTE and non-3GPP accesses,
`Ericsson, 3GPP TSG SA WG2 S2#57, April 23-27, 2007 (“S2-
`071738”)
`Aug. 22, 2012 Amendment and Response from File History of
`USPN 8,638,750
`April 24, 2013 Office Action from File History of USPN
`8,638,750
`July 23, 2013 Amendment and Response from File History of
`USPN 8,638,750
`September 12, 2013 Notice of Allowance and Examiner
`Interview Summary from File History of USPN 8,638,750
`3GPP FAQs, dated 8/3/2016
`
`3GPP News
`
`U.S. Patent No. 6,246,874 to Voce (“Voce”)
`
`3GPP FTP Site for 23.401
`
`3GPP FTP Site for 23.402
`
`Report of SA WG2 meeting #57, pp. 1-4, 14, 17-18, 27, 31, 78
`
`Draft Report of SA WG2 ad-hoc meeting #56c, pp. 1-4, 74
`
`Joint Claim Construction Chart dated Dec. 8, 2016 from Huawei
`Technologies Co. Ltd. v. T-Mobile US, Inc. and T-Mobile USA,
`Inc., No. 2:16-cv-00056-JRG-RSP (E.D. Tex.)
`Litigation Settlement Agreement
`
`Exhibit
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`
`1028
`
`
`
`
`
`ActiveUS 165983212v.1
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`6
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`
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