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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioner
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`v.
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`INTELLECTUAL VENTURES II LLC
`Patent Owner
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`Case IPR2018-01380
`U.S. Patent No. 8,682,357
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`__________________
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Case No. IPR2018-01380
`Patent 8,682,357
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`Petitioner Telefonaktiebolaget LM Ericsson and Ericsson Inc. and Patent
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`Owner Intellectual Ventures II LLC have reached a settlement agreement and
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`jointly request termination of IPR2018-01380 under 35 U.S.C. § 317(a). The
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`Board authorized the filing of this motion on June 13, 2019.
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`I.
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`Statement of Relief Requested
`Due to a settlement, Petitioner and Patent Owner jointly request termination
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`of IPR2018-01380 under 35 U.S.C. § 317(a).
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`II.
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`Statement of Facts
`Petitioner and Patent Owner have reached an agreement to settle this inter
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`partes review proceeding. Petitioner and Patent Owner are filing the settlement
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`agreement concurrently with this motion, along with a “Joint Request That the
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`Settlement Agreement Be Treated as Business Confidential and Key Separate
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`Under 35 U.S.C. § 317(b).” A joint motion to terminate generally must “(1)
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`include a brief explanation as to why termination is appropriate; (2) identify all
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`parties in any related litigation involving the patents at issue; (3) identify any
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`related proceedings currently before the Office; and (4) discuss specifically the
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`current status of each such related litigation or proceeding with respect to each
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`party to the litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc.,
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`IPR2014-00018, Paper 26 at 2 (P.T.A.B. July 28, 2014).
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`Case No. IPR2018-01380
`Patent 8,682,357
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`(1) Brief Explanation.
`Termination is appropriate in this case because the parties have settled their
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`dispute. A “Joint Request That the Settlement Agreement Be Treated as Business
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`Confidential and Kept Separate Under 35 U.S.C. § 317(b)” is being filed
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`concurrently with this motion.
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`(2) Related Litigation.
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` The ’357 Patent is subject to pending lawsuits entitled Intellectual Ventures
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`II LLC v. T-Mobile USA, Inc. et al., Case No. 2:17-cv00661-JRG (E.D. Tex.) and
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`Intellectual Ventures II LLC v. Sprint Spectrum, L.P., Case No. 2:17-cv-662-JRG
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`(E.D. Tex.) (the “Litigation”).
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`(3) Related Proceedings Before the Office.
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`In addition to IPR2018-01380, Petitioner and Patent Owner are aware of the
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`following inter partes review proceedings involving the ’357 Patent: T-Mobile
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`USA, Inc. et al. v. Intellectual Ventures II LLC, IPR2018-01775, and Nokia of
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`America Corp. v. Intellectual Ventures II LLC, IPR2019-00667.
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`(4) Status of Related Litigation and Proceedings Before the Office.
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`The related district court proceeding awaits trial but is stayed pending
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`settlement between the parties. T-Mobile’s petition for inter partes review was
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`denied institution, and Nokia jointly moved with Patent Owner to terminate, which
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`Case No. IPR2018-01380
`Patent 8,682,357
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`the Board granted: T-Mobile USA, Inc. et al. v Intellectual Ventures II LLC,
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`IPR2018-01775, Paper 10 at 1 (PTAB Mar. 18, 2019); and Nokia of America Corp.
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`v. Intellectual Ventures II LLC, IPR2019-00667, Paper 10 at 1 (PTAB May 6,
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`2019).
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`III. Argument
`The Board should terminate this inter partes review for the following
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`reasons.
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`First, Petitioner and Patent Owner have met the statutory requirement that
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`they file a “joint request” to terminate before the Office “has decided the merits of
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`the proceeding.” 35 U.S.C. § 317(a). Under § 317(a), an inter partes review “shall”
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`be terminated upon a joint request “unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” There are no other
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`preconditions of § 317(a).
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`Second, the parties have reached a settlement as to all the disputes in this
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`proceeding. A true copy of the settlement agreement is filed concurrently herewith.
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`See Ex. 1026. The parties request that the settlement agreement be treated as
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`business confidential information and be kept separate from the files of this
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`proceeding in accordance with 37 C.F.R. § 42.74(c). No other such agreements,
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`written or oral, exist between or among the parties.
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`Patent 8,682,357
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`Accordingly, the parties in the present proceeding jointly certify that there
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`are no other written or oral agreements or understandings, including any collateral
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`agreements, between them, including but not limited to licenses, covenants not to
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`sue, confidentiality agreements, payment agreements, or other agreements of any
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`kind, that are made in connection with or in contemplation of, the termination of
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`this proceeding.
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`Third, a termination of this proceeding will conserve the Board’s resources
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`and obviate the need for any more Board involvement in this matter.
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`IV. Conclusion
`For these reasons, Petitioner and Patent Owner respectfully request
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`termination of this inter partes review of the ’357 Patent.
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`Case No. IPR2018-01380
`Patent 8,682,357
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`Respectfully submitted,
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`/s/ J. Andrew Lowes
`J. Andrew Lowes
`Registration No. 40,706
`Lead Counsel for Petitioner
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
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`/Daniel S. Block/
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`Daniel S. Block, Reg. No. 68,395
`Counsel for Patent Owner
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`Dated: June 13, 2019
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`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
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`Telephone: 972-680-7557
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`Facsimile: 214-200-0853
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`Date: June 12, 2019
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`Case No. IPR2018-01380
`Patent 8,682,357
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6, that
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`service was made on the Patent Owner as detailed below.
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`Date of service June 13, 2019
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`Manner of service Email: bpickard-PTAB@sternekessler.com; dblock-
`PTAB@sternekessler.com; tdutton-
`PTAB@sternekessler.com; rrigby@intven.com;
`jhietala@intven.com; ptab@sternekessler.com
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`Documents served Joint Motion to Terminate Proceeding; Ex. 1026
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`Persons served Byron L. Pickard
`Daniel S. Block
`Tyler J. Dutton
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washing, D.C. 20005
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`Russell Rigby
`James R. Hietala
`INTELLECTUAL VENTURES
`3150 139th Avenue S.E.
`Bellevue, WA 98005
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`/s/ J. Andrew Lowes
`J. Andrew Lowes
`Lead Counsel for Petitioner
`Registration No. 40,706
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