Paper 44
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: November 19, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`OPTIS WIRELESS TECHNOLOGY, LLC,
`Patent Owner.
`_______________
`
`IPR2018-00653
`IPR2018-00655
`Patent 8,208,569 B21
`_______________
`
`
`
`Before KEVIN F. TURNER, MIRIAM L. QUINN, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.70
`
`
`
`1
` The parties are not authorized to use this style of caption.
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: November 19, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`OPTIS WIRELESS TECHNOLOGY, LLC,
`Patent Owner.
`_______________
`
`IPR2018-00653
`IPR2018-00655
`Patent 8,208,569 B21
`_______________
`
`
`
`Before KEVIN F. TURNER, MIRIAM L. QUINN, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.70
`
`
`
`1
` The parties are not authorized to use this style of caption.
`
`
`
`IPR2018-00653
`IPR2018-00655
`Patent 8,208,569 B2
`
`
`I. BACKGROUND
`
`
`
`On September 9, 2019, the Final Written Decision was entered in each
`
`of the captioned proceedings. Paper 40 (“Decision” or “Dec.”). On October
`
`9, 2019, Patent Owner filed Patent Owner’s Request for Rehearing of Final
`
`Written Decision. Paper 41 (“Request for Rehearing”).
`
`
`
`On May 7, 2020, the General Order in Cases Involving Requests for
`
`Rehearing Under Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d1320 (Fed.
`
`Cir. 2019) was entered, ordering that these proceedings “are held in
`
`abeyance.” Paper 42, 2 (“Gen. Order in Reh’g Cases”). On October 26,
`
`2021, the General Order Lifting General Order in Cases Involving Requests
`
`for Rehearing Under Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
`
`(Fed. Cir. 2019) was entered, ordering that these proceedings “are no longer
`
`in administrative abeyance.” Paper 43, 2.
`
`
`
`In an email to the Board dated November 1, 2021, Petitioner’s counsel
`
`stated that on October 26, 2021, the Board removed these proceedings from
`
`abeyance, and now that the cases are active, the parties renew their request
`
`to file a joint motion to vacate the final written decisions and terminate the
`
`proceedings in light of the parties’ settlement. See Ex. 3002.
`
`II. ANALYSIS
`
`
`
`In response to the parties’ request, we provide the parties the
`
`following guidance.
`
`
`
`
`
`A. Motion to Vacate
`
`No motions to vacate are authorized. The Final Written Decision,
`
`issued under 35 U.S.C. § 318, in each of these proceedings stands as the
`
`final agency action. See Kingston Tech. Co. v. Polaris Innovations Ltd.,
`
`IPR2016-01621, Paper 38 at 2 (PTAB Oct. 29, 2021) (Order) (Chief Judge
`
`
`
`2
`
`
`
`IPR2018-00653
`IPR2018-00655
`Patent 8,208,569 B2
`
`Scott R. Boalick) (“The Board already has proceeded to a final written
`
`decision in this case and, therefore, under the plain language of the statute, a
`
`motion to terminate without a final written decision is not available under
`
`§ 317(a).”).
`
`
`
`
`
`B. Motion to Terminate
`
`The parties are authorized to file a motion to terminate due to
`
`settlement post-institution in accordance with 35 U.S.C. § 317(b) and
`
`37 C.F.R. § 42.74. In that event, Patent Owner’s pending Request for
`
`Rehearing would be rendered moot.
`
`
`
`Alternatively, in lieu of the parties filing a motion to terminate due to
`
`settlement, Patent Owner is authorized to file a motion to withdraw the
`
`pending Request for Rehearing, after which each case will close as there
`
`would be no other issues pending.
`
`Regardless of which option the parties or Patent Owner selects from
`
`this section, the Board’s final written decision in these proceedings will
`
`remain the final agency action.
`
`
`
`
`
`C. Request Director Review
`
`Patent Owner’s request for rehearing was pending before the Office
`
`issued guidance on an interim Director review process.2 Thus, although not
`
`specifically requested, as a further alternative to the parties filing a motion to
`
`terminate due to settlement, Patent Owner is authorized to request Director
`
`review of the Final Written Decisions in these cases consistent with the
`
`
`2 See USPTO implementation of an interim Director review process
`following Arthrex, https://www.uspto.gov/patents/patent-trial-and-
`appealboard/ procedures/uspto-implementation-interim-director-review.
`
`
`
`3
`
`
`
`IPR2018-00653
`IPR2018-00655
`Patent 8,208,569 B2
`
`Office’s interim guidance.3 If Patent Owner does not file a request for
`
`Director review within the time allotted for action in this Order, then the
`
`Board’s Final Written Decision will remain the final agency decision.
`
`
`3 See supra; see also Arthrex Q&As, https://www.uspto.gov/patents/patent-
`trial-and-appeal-board/procedures/arthrex-qas (updated July 20, 2021)
`(setting forth more details about the interim Director review process).
`
`
`
`4
`
`
`
`IPR2018-00653
`IPR2018-00655
`Patent 8,208,569 B2
`
`
`
`
`
`
`It is, therefore,
`
`ORDER
`
`ORDERED that the parties are authorized to take the actions set forth
`
`in sections II.B and II.C above within fourteen (14) days hereof; and
`
`FURTHER ORDERED that no other filings are authorized.
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00653
`IPR2018-00655
`Patent 8,208,569 B2
`
`PETITIONER:
`
`Peter P. Chen
`David A. Garr
`Gregory S. Discher
`COVINGTON & BURLING LLP
`pchen@cov.com
`dgarr@cov.com
`gdischer@cov.com
`
`PATENT OWNER:
`
`Brent N. Bumgardner
`Matthew C. Juren
`NELSON BUMGARDNER ALBRITTON P.C.
`bbumgardner@nbclaw.net
`matthew@nelbum.com
`
`
`
`
`6
`
`
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