`571-272-7822
`
`
`
`
`Paper: 26
`Entered: September 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, Inc.
`ZTE CORPORATION, and ZTE (USA), Inc.,
`Petitioners
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`___________
`
`Case IPR2017-01508 (Patent 8,385,966 B2)
`Case IPR2017-01509 (Patent 9,037,129 B2)1
`____________
`
`
`
`Before BRYAN F. MOORE, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Joint Motion to Terminate with Respect to
`ZTE Corporation and ZTE (USA), Inc.
`37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`1 The parties are not authorized to use this caption. The parties should use
`the caption appropriate to the specific case.
`
`
`
`IPR2017-01508 (Patent 8,385,966)
`IPR2017-01509 (Patent 9,037,129)
`
`
`INTRODUCTION
`On November 26, 2017, we instituted an inter partes review in both
`IPR2017-01508 and IPR2017-01509 (“’1508 IPR” and “’1509 IPR,”
`respectively), both captioned HTC Corporation, HTC America, Inc.
`(“HTC”), ZTE Corporation, and ZTE (USA), Inc. (“ZTE”) (collectively,
`“Petitioners”) versus Cellular Communications Equipment LLC (“Patent
`Owner”). In both proceedings, a final hearing was held on July 10, 2018.
`The Board has not issued a final written decision. HTC was previously
`terminated from this proceeding. ’1508 IPR, Paper 23; ’1509 IPR, Paper 23.
`Per our email dated September 10, 2018, we authorized the filing of a
`motion to terminate and to treat the settlement documents as confidential as
`to ZTE. See Ex. 3002. Per our authorization and also on September 10,
`2018, Petitioners and Patent Owner filed a Joint Motion to Terminate
`Petitioners Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 as to ZTE
`only (“Joint Motion”). ’1508 IPR, Paper 24; ’1509 IPR, Paper 24.
`Concurrent with the filing of the Joint Motion, a true copy of a Patent
`License and License Option Agreement (’1508 IPR, Ex. 2016; ’1509 IPR,
`Ex. 2007) were filed. Also concurrent with the filing of the Joint Motion, a
`Joint Request to Treat Agreement as Business Confidential Information
`Under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) was filed. ’1508 IPR,
`Paper 25; ’1509 IPR, Paper 25.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” The
`grant of the motion to terminate will result in the termination of the instant
`
`2
`
`
`
`IPR2017-01508 (Patent 8,385,966)
`IPR2017-01509 (Patent 9,037,129)
`
`proceeding, because HTC was previously terminated and no other
`petitioners remain.
`Generally, however, the Board expects that a proceeding will
`terminate as to settling parties after the filing of a settlement agreement.
`See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012). We are persuaded that, under these circumstances, it is
`appropriate to terminate both these proceedings. See 37 C.F.R. § 42.72.
`ORDER
`
`Accordingly, it is:
`ORDERED that the joint motion to terminate these proceedings with
`respect to ZTE is GRANTED, and IPR2017-01508 and IPR2017-01509 are
`hereby terminated as no petitioners remain; and
`FURTHER ORDERED that the parties’ Joint Request to Treat
`Agreement as Business Confidential Information Under 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c) relating to ’1508 IPR Exhibits 2016 and ’1509 IPR
`Exhibit 2007, is GRANTED, and the specified exhibits shall be: (i) treated
`as business confidential information; (ii) kept separate from the files of U.S.
`Patent Nos. 8,385,966 and 9,037,129; (iii) kept confidential from any third
`party (including from the non-settling Petitioner HTC); (iv) filed as
`“BOARD ONLY,” and (v) made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause,
`under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01508 (Patent 8,385,966)
`IPR2017-01509 (Patent 9,037,129)
`
`PETITIONERS:
`
`Steve Moore
`steve.moore@pillsburylaw.com
`
`Brian Nash
`brian.nash@pillsburylaw.com
`
`
`PATENT OWNER:
`
`Matthew Juren
`matthew@nelbum.com
`
`Barry Bumgardner
`barry@nelbum.com
`
`4
`
`
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