`
`
`
`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 REQUEST TO FILE SETTLEMENT AGREEMENT AS
`CONFIDENTIAL BUSINESS INFORMATION PURSUANT TO
`35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`
`Mail Stop “PATENT BOARD” Patent
`Trial and Appeal Board U.S. Patent and
`Trademark Office P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`ActiveUS 165983204v.1
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`
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`On December 21, 2017, 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”) settled their dispute with respect to U.S.
`
`Patent No. 8,638,750 (“the 750 Patent”), which is subject to the above-captioned
`
`inter partes review proceeding. The Litigation Settlement Agreement between the
`
`parties fully resolves all disputes relating to the 750 Patent before the district court,
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`court of appeals, and the PTAB. See Exhibit 1028. Pursuant to 37 C.F.R.
`
`§ 42.74(b), any agreement or understanding between the parties made in
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`connection with, or in contemplation of, the termination of a proceeding shall be in
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`writing and a true copy shall be filed with the Board before the termination of the
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`trial. Accordingly, the parties have filed the Litigation Settlement Agreement
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`herewith as Exhibit 1028.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties hereby
`
`jointly request that Exhibit 1028 is treated as confidential business information,
`
`kept separate from the files of the involved patent, and made available only to
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`Federal Government agencies on written request, or to any person on a showing of
`
`good cause. The Board authorized the parties to file this Joint Request on
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`December 28, 2017 via email.
`
`The terms require the parties to treat the Litigation Settlement Agreement as
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`confidential information and limit the parties’ ability to share the settlement
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`ActiveUS 165983204v.1
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`1
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`agreement or disclose its contents with third parties. See Exhibit 1028, at 4-5.
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`Moreover, the Litigation Settlement Agreement does not contain any information
`
`material to patentability. As such, the parties respectfully request that the Board
`
`treat Exhibit 1028 as confidential business information pursuant to 35 U.S.C. §
`
`317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`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.
`
`
`
`
`
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`ActiveUS 165983204v.1
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`2
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`
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`
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies
`
`that
`
`the above-captioned “JOINT
`
`REQUEST TO FILE SETTLEMENT AGREEMENT AS CONFIDENTIAL
`
`BUSINESS INFORMATION PURSUANT TO 35 U.S.C. § 317(b) AND 37
`
`C.F.R. § 42.74(c)” 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 165983204v.1
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`3
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