UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`
`__________________
`
`Case IPR2018-01694
`U.S. Patent No. 8,897,828
`
`__________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`
`__________________
`
`Case IPR2018-01694
`U.S. Patent No. 8,897,828
`
`__________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`Case No. IPR2018-01694
`Patent 8.897,828
`
`Petitioners Telefonaktiebolaget LM Ericsson and Ericsson Inc. and Patent
`
`Owner Intellectual Ventures II LLC have reached a settlement agreement and
`
`jointly request termination of IPR2018-01694 under 35 U.S.C. § 317(a). The
`
`Board authorized the filing of this motion on June 12, 2019.
`
`I.
`
`Statement of Relief Requested
`Due to a settlement, Petitioners and Patent Owner jointly request termination
`
`of IPR2018-01694 under 35 U.S.C. § 317(a).
`
`II.
`
`Statement of Facts
`Petitioners and Patent Owner have reached an agreement to settle this inter
`
`partes review proceeding. Petitioners and Patent Owner are filing the settlement
`
`agreement concurrently with this motion, along with a “Joint Request That the
`
`Settlement Agreement Be Treated as Business Confidential and Key Separate
`
`Under 35 U.S.C. § 317(b).” A joint motion to terminate generally must “(1)
`
`include a brief explanation as to why termination is appropriate; (2) identify all
`
`parties in any related litigation involving the patents at issue; (3) identify any
`
`related proceedings currently before the Office; and (4) discuss specifically the
`
`current status of each such related litigation or proceeding with respect to each
`
`party to the litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc.,
`
`IPR2014-00018, Paper 26 at 2 (P.T.A.B. July 28, 2014).
`
`1
`
`
`
`Case No. IPR2018-01694
`Patent 8.897,828
`
`(1) Brief Explanation.
`Termination is appropriate in this case because the parties have settled their
`
`dispute. A “Joint Request That the Settlement Agreement Be Treated as Business
`
`Confidential and Kept Separate Under 35 U.S.C. § 317(b)” is being filed
`
`concurrently with this motion.
`
`(2) Related Litigation.
`
` The ’828 Patent is subject to pending lawsuits entitled Intellectual Ventures
`
`II LLC v. T-Mobile USA, Inc. et al., Case No. 2:17-cv00661-JRG (E.D. Tex.) and
`
`Intellectual Ventures II LLC v. Sprint Spectrum, L.P., Case No. 2:17-cv-662-JRG
`
`(E.D. Tex.) (the “Litigation”).
`
`(3) Related Proceedings Before the Office.
`
`Petitioners and Patent Owner are aware of the following pending inter partes
`
`review proceedings involving the ’828 Patent: T-Mobile USA, Inc. et al. v.
`
`Intellectual Ventures II LLC, IPR2018-01773 (P.T.A.B.).. ) Status of Related
`
`Litigation and Proceedings Before the Office.
`
`The related district court proceeding awaits trial but is stayed pending
`
`settlement between the parties. The Board has instituted trial in all of the above-
`
`referenced inter partes review proceedings.
`
`III. Argument
`
`2
`
`
`
`Case No. IPR2018-01694
`Patent 8.897,828
`
`The Board should terminate this inter partes review for the following
`
`reasons.
`
`First, Petitioners and Patent Owner have met the statutory requirement that
`
`they file a “joint request” to terminate before the Office “has decided the merits of
`
`the proceeding.” 35 U.S.C. § 317(a). Under § 317(a), an inter partes review
`
`“shall” be terminated up a joint request “unless the Office has decided the merits of
`
`the proceeding before the request for termination is filed.” There are no other
`
`preconditions of § 317(a).
`
`Second, the parties have reached a settlement as to all the disputes in this
`
`proceeding. A true copy of the settlement agreement is filed concurrently
`
`herewith. See Paper No. 14. The parties request that the settlement agreement be
`
`treated as business confidential information and be kept separate from the files of
`
`this proceeding in accordance with 37 C.F.R. § 42.74(c). No other such
`
`agreements, written or oral, exist between or among the parties.
`
`Accordingly, the parties in the present proceeding jointly certify that there
`
`are no other written or oral agreements or understandings, including any collateral
`
`agreements, between them, including but not limited to licenses, covenants not to
`
`sue, confidentiality agreements, payment agreements, or other agreements of any
`
`kind, that are made in connection with or in contemplation of, the termination of
`
`3
`
`
`
`Case No. IPR2018-01694
`Patent 8.897,828
`
`this proceeding.
`
`Third, a termination of this proceeding will conserve the Board’s resources
`
`and obviate the need for any more Board involvement in this matter.
`
`IV. Conclusion
`For these reasons, Petitioners and Patent Owner respectfully request
`
`termination of this inter partes review of the ’828 Patent.
`
`4
`
`
`
`Dated: June 13, 2019
`
`Date: June 13, 2019
`
`Case No. IPR2018-01694
`Patent 8.897,828
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
` /s / Chad C. Walters
`Chad C. Walters (Reg. No. 48,022)
`Baker Botts L.L.P.
`2001 Ross Avenue, Ste 900
`Dallas, Texas 75201
`Phone: (214) 953-6511
`Facsimile: (214) 661-4511
`
`ATTORNEYS FOR PETITIONERS
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`/Byron L. Pickard/
`
`Byron L. Pickard, Reg. No. 65,172
`Counsel for Patent Owner
`
`
`
`Case No. IPR2018-01694
`Patent 8.897,828
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on June 13, 2019, pursuant to 37 C.F.R.
`
`§§ 42.6(e) and 42.105(b), a copy of this Joint Motion to Terminate was served on
`
`Patent Owner’s counsel via email at the following correspondence addresses:
`
` ptab@sternekessler.com
`
`Dated: June 13, 2019
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
` /s / Chad C. Walters
`Chad C. Walters (Reg. No. 48,022)
`Baker Botts L.L.P.
`2001 Ross Avenue, Ste 900
`Dallas, Texas 75201
`Phone: (214) 953-6511
`Facsimile: (214) 661-4511
`
`ATTORNEYS FOR PETITIONERS
`
`
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