`Tel: 571.272.7822
`
`
`Paper 16
`Entered: January 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZTE (USA) INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00713
`Patent 6,895,449 B2
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`JUDGMENT
`Termination of Proceeding
`37 C.F.R. § 42.73
`
`
`
`IPR2017-00713
`Patent 6,895,449 B2
`
`
`Petitioner, ZTE (USA) Inc. (“ZTE”), and Patent Owner, Papst
`Licensing GmbH & Co. KG (“Papst”), jointly move to terminate this inter
`partes review in light of their settlement that resolves their dispute regarding
`U.S. Patent No. 6,895,449 B2 (“the ’449 patent”). Paper 14 (“Mot.”). The
`parties 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. 2007. Pursuant to 37 C.F.R. § 42.74(c), the parties
`additionally filed a joint request to treat the Settlement Agreement as
`business confidential information kept separate from the file of the involved
`patent. Paper 15.
`For the reasons set forth below, the Joint Motion to Terminate with
`respect to ZTE 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, the parties indicate that their Settlement Agreement resolves the
`controversy between the parties relating to the involved patent. Mot. 3.
`Although this inter partes review has been instituted, the proceeding is still
`in the briefing stage. We have not yet held an oral hearing and have not
`
`2
`
`
`
`IPR2017-00713
`Patent 6,895,449 B2
`
`entered a final written decision in this proceeding.
`Upon review of the procedural posture of this proceeding and the facts
`before us, we determine that it is appropriate to terminate this proceeding.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate is granted;
`FURTHER ORDERED that this review is terminated as to all parties
`including ZTE and Papst; and
`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.
`
`
`
`For PETITIONER:
`Scott Miller
`Darren Franklin
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`smiller@sheppardmullin.com
`dfranklin@sheppardmullin.com
`
`
`For PATENT OWNER:
`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`
`3
`
`
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
