`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI TECHNOLOGIES CO. LTD.,
`Petitioner
`
`v.
`
`NOKIA SOLUTIONS AND NETWORKS OY,
`Patent Owner
`____________
`
`Case: IPR2017-01581
`U.S. Patent No. 8,121,082
`____________
`
`JOINT MOTION BY PETITIONER 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
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Huawei
`
`Techs. Co. Ltd. (“Huawei” or “Petitioner”) and Patent Owner Nokia Solutions and
`
`Networks Oy (“Nokia”) jointly request termination of the inter partes review of U.S.
`
`Patent No. 8,121,082 (“the 082 Patent”), Case No. IPR2017-01581, 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 22, 2017 via e-mail.
`
`Patent Owner filed a patent infringement lawsuit alleging infringement of the
`
`082 Patent in the United States District Court for the Eastern District of Texas,
`
`captioned Nokia Solutions and Networks US LLC v. Huawei Techs. Co. Ltd., Case
`
`No. 2:16-cv-756-JRG-RSP. The parties have agreed to the dismissal of all claims in
`
`this lawsuit, including those relating to the 082 Patent, and the parties have filed a
`
`stipulation and proposed order for dismissal. There is no other litigation or
`
`proceeding involving the 082 Patent, and no litigation or proceeding is contemplated
`
`in the foreseeable future in view of the Litigation Settlement Agreement (Ex. 1100).
`
`Termination of Case No. IPR2017-01581 Would Be Appropriate.
`I.
`Termination of IPR2017-01581 by the Board would be appropriate. The
`
`parties have executed a settlement agreement that resolves all of their disputes
`
`concerning the 082 Patent—expressly including the present IPR—and the Board has
`
`not yet conducted an oral hearing. Motions to terminate based on settlement are
`
`1
`
`
`
`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 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 1100.
`
`The parties hereby represent
`
`that
`
`the document filed as Exhibit 1100
`
`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 Huawei and Nokia request this
`
`termination, no estoppel under 35 U.S.C. § 315(e) shall attach as to Petitioner
`
`Huawei.
`
`Submitted concurrently herewith is a request by Huawei and Nokia that the
`
`settlement agreement be treated as business confidential information, be kept
`
`2
`
`
`
`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).
`
`Conclusion
`II.
`Therefore, Huawei and Nokia respectfully request termination of the inter
`
`partes review of U.S. Patent No. 8,121,082, Case No. IPR2017-01581, without
`
`prejudice.
`
`Dated: December 22, 2017
`
`Dated: December 22, 2017
`
`/s/ W. Karl Renner
`W. Karl Renner
`Registration No. 41,265
`Lead Counsel for Petitioner
`
`/ s/ S. Benjamin Pleune
`S. Benjamin Pleune
`Registration No. 52,421
`Lead Counsel for Patent Owner
`
`3
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that the above-captioned “JOINT MOTION
`
`BY PETITIONER AND PATENT OWNER TO TERMINATE PROCEEDING”
`
`was served in its entirety on December 22, 2017 pursuant to agreement via email to
`
`counsel for Huawei at:
`
`W. Karl Renner
`Jeremy J. Monaldo
`Brian G. Strand
`IPR35548-0036IP1@fr.com
`PTABInbound@fr.com
`
`/S. Benjamin Pleune/
`S. Benjamin Pleune, Reg. No. 52,421
`Lead Counsel for Petitioners
`
`4
`
`
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