`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`T-MOBILE USA, INC., T-MOBILE US, INC., SPRINT SPECTRUM L.P., and
`SPRINTCOM, INC.,
`Petitioner
`v.
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`_____________
`
`Case IPR2018-01773
`Patent No. 8,897,828
`_____________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`Case No. IPR2018-01773
`Patent 8,897,828
`
`
`Sprint Spectrum L.P., SprintCom, Inc., T-Mobile USA, Inc., and T-Mobile
`
`
`
`
`US, Inc. (collectively, “Petitioner”) and Intellectual Ventures II LLC (“Patent
`
`Owner”) have reached a settlement and jointly request termination of IPR2018-
`
`01773 under 35 U.S.C. § 317(a). The Board authorized the filing of this motion on
`
`June 25, 2019.
`
`I.
`
`Statement of Relief Requested
`Due to a settlement, Petitioner and Patent Owner jointly request termination
`
`of IPR2018-01773 under 35 U.S.C. § 317(a).
`
`II.
`
`Statement of Facts
`Petitioner and Patent Owner have reached an agreement to settle this inter
`
`partes review proceeding. Petitioner and Patent Owner are filing settlement
`
`agreements concurrently with this motion, along with a “Joint Request That the
`
`Settlement Agreements Be Treated as Business Confidential and Kept 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,
`
`
`
`
`
`1
`
`
`
`
`
`
`Paper 26 at 2 (P.T.A.B. July 28, 2014).
`
`
`
`
`Case No. IPR2018-01773
`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 Agreements 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-cv-661-JRG (E.D. Tex.) and
`
`Intellectual Ventures II LLC v. Sprint Spectrum L.P. et al., Case No. 2:17-cv-662-
`
`JRG (E.D. Tex.) in which T-Mobile USA, Inc., T-Mobile U.S., Inc., and Sprint
`
`Spectrum L.P.,1 respectively, are defendants (the “Litigation”).
`
`
`
`
`
`(3) Related Proceedings Before the Office.
`
`In addition to IPR2018-01773, Petitioner and Patent Owner are aware of the
`
`following now-terminated inter partes review proceedings involving the ’828
`
`Patent: Ericsson Inc. v. Intellectual Ventures II, LLC, IPR2018-01694 (P.T.A.B.);
`
`
`1 Nextel Operations, Inc. (“Nextel”) is also a named defendant in the Litigation.
`
`Nextel has merged with SprintCom, Inc., and no longer exists.
`
`
`
`
`
`2
`
`
`
`
`
`
`Case No. IPR2018-01773
`Patent 8,897,828
`
`
`and Nokia of America Corporation v. Intellectual Ventures II LLC, IPR2018-01641
`
`
`
`
`(P.T.A.B.).
`
`
`
`
`
`(4) Status of Related Litigation and Proceedings Before the Office.
`
`The Litigation was dismissed on June 24, 2019, pursuant to a joint stipulation
`
`between the parties. See Intellectual Ventures II LLC v. Sprint Spectrum L.P. et al.,
`
`Case No. 2:17-cv-662-JRG, Dkt. 546 (E.D. Tex., June 24, 2019). The Board has
`
`instituted trial in all of the above-referenced inter partes review proceedings.
`
`III. Argument
`The Board should terminate this inter partes review for the following reasons.
`
`First, Petitioner 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 upon 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. True copies of the applicable settlement agreements are filed
`
`concurrently herewith. See Exs. 1011 & 1012. The parties request that the settlement
`
`agreements be treated as business confidential information and be kept separate from
`
`
`
`
`
`3
`
`
`
`
`
`
`Case No. IPR2018-01773
`Patent 8,897,828
`
`
`the files of this proceeding in accordance with 37 C.F.R. § 42.74(c). 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 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, Petitioner and Patent Owner respectfully request
`
`termination of this inter partes review of the ’828 patent.
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`Dated: June 25, 2019
`
`
`
`
`
`
`
`Case No. IPR2018-01773
`Patent 8,897,828
`
`
`
`Respectfully submitted,
`
`/s/ Robert C. Hilton
`Robert C. Hilton
`Reg. No. 47,649
`McGuireWoods LLP
`2000 McKinney Ave., Suite 1400
`Dallas, TX 75201
`Telephone: (214) 932-6400
`rhilton@mcguirewoods.com
`
`George B. Davis
`Reg. No. 68,205
`McGuireWoods LLP
`Gateway Plaza
`800 East Canal Street
`Richmond, VA 23219
`Telephone: (804) 775-1000
`gdavis@mcguirewoods.com
`
`ATTORNEYS FOR PETITIONER
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN &
`FOX P.L.L.C.
`
`/s/ Lestin Kenton/
`
`
`Lestin L. Kenton, Reg. No. 72,314
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2018-01773
`Patent 8,897,828
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6, that
`
`service was made on the Patent Owner as detailed below.
`
`Byron L. Pickard, Reg. No. 65,172
`Lestin L. Kenton, Reg. No. 72,314
`Timothy L. Tang, Reg. No. 75,187
`Daniel S. Block, Reg. No. 68,395
`Tyler J. Dutton, Reg. No. 75,069
`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
`ptab@sternekessler.com
`
`James R. Hietala, Reg. No. 51,802
`Russell Rigby, Reg. No. 50,267
`Intellectual Ventures
`3150 139th Avenue S.E.
`Bellevue, WA 98005
`jhietala@intven.com
`rrigby@intven.com
`
`
`
`/s/ Robert C. Hilton
`Robert C. Hilton
`
`
`
`
`
`
`