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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`NOKIA OF AMERICA CORPORATION
`Petitioner
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`v.
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`INTELLECTUAL VENTURES II LLC
`Patent Owner
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`_____________________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
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`Inter Partes Review No. 2018-01641
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-1450
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Nokia of America Corporation
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`(“Nokia” or “Petitioner”) and Patent Owners Intellectual Ventures II LLC (“IV” or
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`“Patent Owner”) jointly request termination of IPR2018-01641, which is directed to
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`U.S. Patent No 8,897,828 (the “’828 Patent”).
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioner and Patent Owner jointly request
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`termination of this inter partes review pursuant to a settlement.
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`II.
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`STATEMENT OF FACTS
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`Petitioner and Patent Owner have reached an agreement to settle this inter
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`partes review proceeding. A “Joint Request That Settlement Agreement Be Treated
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`as Business Confidential Information and Kept Separate Pursuant to 35 U.S.C. §
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`317(b) and 37 C.F.R. § 42.74” is being filed concurrently with this Joint Motion to
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`Terminate in reference to sealing of the settlement agreement. See 35 U.S.C. §
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`317(b) (requiring parties to file agreements in writing with the Office). The Board
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`previously provided authorization to file this motion on April 29, 2019. Ex. A. A
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`joint motion to terminate generally must “(1) include a brief explanation as to why
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`termination is appropriate; (2) identify all parties in any related litigation involving
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`the patents at issue; (3) identify any related proceedings currently before the Office,
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`and (4) discuss specifically the current status of each such related litigation or
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`1
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`proceeding with respect to each party to the litigation or proceeding.” Heartland
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`Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB July 28, 2014).
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`(1) Brief Explanation.
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`Termination is appropriate in this case because the parties have settled their
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`dispute. A “Joint Request That Settlement Agreement Be Treated as Business
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`Confidential Information and Kept Separate Pursuant to 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74” is being filed concurrently with this Joint Motion to Terminate in
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`reference to sealing of the settlement agreements.
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`(2) Related Litigation
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`The following litigations concerning the ’828 patent are pending: Intellectual
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`Ventures II LLC v. Sprint Spectrum L.P. et al. 2:17-cv-00662 (TXED) (Lead) and
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`Intellectual Ventures II LLC v. T-Mobile USA, Inc. et al. 2:17-cv-00661 (TXED)
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`both filed September 21, 2017.
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`(3) Related Proceedings Before the Office
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`Petitioner and Patent Owner are aware of the following pending inter partes
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`review proceedings: Ericsson Inc. et al v. Intellectual Ventures II LLC, IPR2018-
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`01694 (PTAB) and T-Mobile USA, Inc. et al v. Intellectual Ventures II LLC,
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`IPR2018-01773 (PTAB).
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`(4) Related Litigation or Proceeding Status
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`2
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` Jury selection for the related litigation stated above is set for May 13, 2019.
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`Ex. B. Both pending inter partes review proceedings have been instituted: Ericsson
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`Inc. et al v. Intellectual Ventures II LLC, IPR2018-01694, Paper 7 at 1 (PTAB Mar.
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`20, 2019) and T-Mobile USA, Inc. et al v. Intellectual Ventures II LLC, IPR2018-
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`01773, Paper 9 at 1 (PTAB Apr. 22, 2019).
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`III. ARGUMENT
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`The Board should terminate this case as the parties jointly request, for the
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`following 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 section 317(a), an inter partes review
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`shall be terminated upon such joint request “unless the Office has decided the merits
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`of the proceeding before the request for termination is filed.” There are no other
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`preconditions of 35 U.S.C. § 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 and as to the ’828 Patent. A true copy of the settlement agreement is filed
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`concurrently herewith. See Ex. C. The parties request that the settlement agreements
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`be treated as business confidential information, and be kept separate from the files of
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`this 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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`3
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`Accordingly, the parties in the present proceeding jointly certify that there are
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`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 the
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`instant 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
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`For the foregoing reasons, Petitioner and Patent Owner respectfully request
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`termination of this inter partes review of the ’828 Patent.
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`Date: April 29, 2019
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`Date: April 29, 2019
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`Respectfully Submitted,
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`/s/ Brianne M. Straka
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`Brianne Straka (Reg. No. 70,152
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`191 N Wacker Drive Suite 2700
`Chicago, Illinois 60606
`Telephone: (312) 705-7400
`Fax: (312) 705-7401
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`Counsel for Petitioner Nokia of America
`Corporation
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`/s/ Byron Pickard
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`Byron Pickard (Reg. No. 65,172)
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`1100 New York Avenue, NW
`Washington, D.C. 20005
`Tel.: (202)772-8521
`Fax: (202) 371-2540
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`Counsel for Patent Owner Intellectual
`Ventures II, LLC
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`5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on April 29, 2019, the
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`foregoing document is being served by E-mail by agreement of the parties to the
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`following counsel of record for the Patent Owners:
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`Byron L. Pickard
`Lestin L. Kenton
`Timothy L. Tang
`Daniel S. Block
`Tyler J. Dutton
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W. Washington, D.C. 20005-3932
`bpickard-PTAB@sternekessler.com
`lkenton-PTAB@sternekessler.com
`ttang-PTAB@sternekessler.com
`dblock-PTAB@sternekessler.com
`tdutton-PTAB@sternekessler.com
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`James R. Hietala
`Russell Rigby
`Intellectual Ventures
`3150 139th Avenue S.E.
`Bellevue, WA 98005
`jhietala@intven.com
`rrigby@intven.com
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` Respectfully Submitted,
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`Date: April 29, 2019
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`/s/ Brianne M. Straka
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`Brianne Straka (Reg. No. 70,152)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`191 N Wacker Drive Suite 2700
`Chicago, Illinois 60606
`Telephone: (312) 705-7400
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`Fax: (312) 705-7401
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`Counsel for Petitioner Nokia of America
`Corporation
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`7
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