`Tel: 571.272.7822
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`Paper 9
`Entered: August 23, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CANON INC., et al.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01211
`Patent 8,504,746
`____________
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Joint Motion to Terminate as to Petitioner Huawei Device Co., Ltd.
`37 C.F.R. § 42.74
`
`
`
`IPR2016-01211
`Patent 8,504,746
`
`
`Joint Petitioner, Huawei Device Co., Ltd. (“Huawei”), and Patent
`Owner, Papst Licensing GmbH & Co. KG (“Papst”), jointly move to
`terminate the instant inter partes review with respect to Huawei in light of
`the settlement between Huawei and Papst that resolves their dispute
`regarding U.S. Patent No. 8,504,746 (“the ’746 patent”). Paper 30 (“Mot.”).
`Huawei and Papst also filed a true copy of their written settlement
`agreement in connection with the termination as required by 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(b). Ex. 2012. Pursuant to 37 C.F.R.
`§ 42.74(c), the parties further filed a joint request to treat the Settlement
`Agreement as business confidential information kept separate from the file
`of the involved patent. Paper 31.
`For the reasons set forth below, the Joint Motion to Terminate with
`respect to Huawei, and the Joint Request to File Settlement Agreement as
`Business Confidential Information are granted.
`Under the Leahy-Smith America Invents Act, settlement between the
`parties to a proceeding is encouraged. Notably, 35 U.S.C. § 317(a), in part,
`provides the following (emphasis added):
`(a) IN GENERAL.—An inter partes review instituted under this
`chapter shall be terminated with respect to any petitioner upon
`the joint request of the petitioner and the patent owner, unless
`the Office has decided the merits of the proceeding before the
`request for termination is filed. If the inter partes review is
`terminated with respect to a petitioner under this section, no
`estoppel under section 315(e) shall attach to the petitioner, or to
`the real party in interest or privy of the petitioner, on the basis of
`that petitioner’s institution of that inter partes review.
`
`Here, although the instant inter partes review has been instituted, we
`have not entered a final written decision in this proceeding. Upon review of
`the procedural posture of this proceeding and the facts before us, we
`
`2
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`
`IPR2016-01211
`Patent 8,504,746
`
`determine that the parties’ contentions have merit, and that it is appropriate
`to terminate this proceeding with respect Huawei. The proceeding, however,
`will not be terminated with respect to Papst, as other Petitioners remain in
`the proceeding.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate, with respect to
`Huawei, is granted;
`FURTHER ORDERED that this review is terminated with respect to
`Huawei only; but this review continues to proceed with Papst and the
`remaining Petitioners;
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information and to keep such
`settlement agreement separate from the patent file, and to make it 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), is granted; and
`FURTHER ORDERED that any subsequent papers filed in this inter
`partes review should not include Huawei in the caption.
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01211
`Patent 8,504,746
`
`
`For PETITIONER:
`David Maiorana (Lead Counsel) (dmaiorana@jonesday.com)
`Gregory Cordrey (gcordrey@jmbm.com)
`Mathew Johnson (mwjohnson@jonesday.com)
`Dion Bergman (dion.bregman@morganlewis.com)
`Ahren Hsu-Hoffman (ahren.hsu0hoffman@morganlewis.com)
`Chris Mizumoto (chris.mizumoto@morganlewis.com)
`T. Vann Pearce (TVPPTABDocket@orrick.com)
`Christopher Higgins (OCHPTABDocket@orrick.com)
`David Witcoff (dlwitcoff@jonesday.com)
`Marc Blackman (msblackman@jonesday.com)
`Brian Rupp (Brian.Rupp@dbr.com)
`Carrie Beyer (Carrie.Beyer@dbr.com)
`Nikola Colic (Nick.Colic@dbr.com)
`David Garr (dgarr@cov.com)
`Herbert H. Finn (finnh@gtlaw.com)
`Jonathan E. Giroux (giroux@gtlaw.com)
`Greg Discher (gdischer@cov.com)
`
`For PATENT OWNER:
`Nicholas T. Peters (Lead Counsel) (ntpete@fitcheven.com)
`Paul Henkelmann (phenkelmann@fitcheven.com)
`Anthony Meola (info@themeolafirm.com)
`
`
`4
`
`
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