IPR2019-00461
`Joint Motion to Terminate
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
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`
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`ZTE (USA), INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`____________________________
`Case No. IPR2019-00461
`
`Patent No.
`9,516,129
`____________________________
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`Joint Motion to Terminate
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`
`
`
`
`
`
`ZTE (USA), INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`____________________________
`Case No. IPR2019-00461
`
`Patent No.
`9,516,129
`____________________________
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, the parties to this
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`IPR2019-00461
`Joint Motion to Terminate
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`case, Petitioner ZTE (USA), Inc. (“ZTE” or “Petitioner”) and Patent Owner
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`SEVEN Networks, LLC (“SEVEN” or “Patent Owner”) (collectively “the
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`Parties”), jointly request termination of inter partes review (IPR) in the following
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`pending cases between the Parties (“the ZTE-SEVEN IPR Proceedings”). For the
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`Board’s convenience, it is noted that a Joint Motion substantially identical to this
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`one is being filed today in each of these three cases.
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`IPR2019-00412 (Patent 9,351,254)
`IPR2019-00585 (Patent 9,247,019)
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`
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`IPR2019-00461 (Patent 9,516,129)
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`The Parties have resolved their disputes and, pursuant to a Patent License
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`And Settlement Agreement (“Settlement Agreement”) that resolves their disputes,
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`now move to terminate this IPR. In accordance with 37 C.F.R. § 42.20(b), the
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`Parties jointly sought authorization to file this motion, and received such
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`authorization from the Board on June 12, 2019.
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`Termination is proper for at least the following reasons:
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`• The Board has not yet “decided the merits of the proceeding before the
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`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added); 77
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`Fed. Reg. at 48,768 (“The Board expects that a proceeding will terminate
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`after the filing of a settlement agreement, unless the Board has already
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`1
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`decided the merits of the proceeding.”). In each of these cases, no decision
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`IPR2019-00461
`Joint Motion to Terminate
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`regarding whether to deny institution has yet been entered. This supports the
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`propriety of terminating this proceeding. 77 Fed. Reg. 48,680, 48,686 (Aug.
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`14, 2012). And 35 U.S.C. § 317(a) provides that “[a]n inter partes review
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`instituted under this chapter shall be terminated with respect to any
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`petitioner upon the joint request of the petitioner and the patent owner,
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`unless the Office has decided the merits of the proceeding before the request
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`for termination is filed.”
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`• The Parties are jointly requesting termination. 77 Fed. Reg. 48,756, 48,768
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`(Aug. 14, 2012) (“There are strong public policy reasons to favor settlement
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`between the parties to a proceeding”).
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`• The Parties have settled their disputes and agreed to voluntary dismissal of
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`the pending related district court litigation between the Parties regarding the
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`patents-at-issue. This case is SEVEN Networks, LLC v. ZTE (USA), Inc. et
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`al., No. 3-17-cv-01495 (N.D. Tex.) (transferred from SEVEN Networks, LLC
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`v. ZTE (USA), Inc., No. 2:17-cv-00440 (E.D. Tex.)), as noted in both Parties’
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`Mandatory Notices. Other pending proceedings between the Parties, or
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`entities related to the parties, involve foreign patents related to one or more
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`of the Patents at issue, including ZTE’s pending European opposition
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`proceeding with respect to European Patent No. EP 3008946; Email Seven
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`2
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`Networks Ireland Limited v. ZTE Deutschland GmbH, District Court of
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`IPR2019-00461
`Joint Motion to Terminate
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`Mannheim, Germany, court reference 2 O 42/19; and Email Seven Networks
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`Ireland Limited v. ZTE Deutschland GmbH, District Court of Mannheim,
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`Germany, court reference 2 O 43/19. The Parties have agreed to effect
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`voluntary dismissal of these proceedings as well.
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`• Any pending proceedings that involve one of the patents involved in the
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`pending related district court litigation between the Parties, and the status of
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`those proceedings (see Google Inc. v. PersonalWeb Techs., LLC, IPR2014-
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`00977/78/79/80, Paper 9, 34 (PTAB Oct. 23, 2014)), are listed in the
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`margin.1 No litigation or proceeding involving the challenged patent is
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`contemplated between the Parties. It is also noted that Patent Owner has
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`continuation applications pending before the USPTO related to the Patents at
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`issue. Petitioner is not a party to any of those proceedings. Aside from the
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`1 The Patents-at-issue in the ZTE-SEVEN IPR Proceedings are not involved in
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`other pending proceedings. Patents related to one or more of the Patents-at-
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`issue are involved in SEVEN Networks, LLC v. Apple Inc., No. 2-19-cv-00115
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`(E.D. Tex.) (answer not yet filed, trial not yet scheduled, no substantive motions
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`yet filed).
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`3
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`proceedings identified above, the Parties are unaware of any other pending
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`IPR2019-00461
`Joint Motion to Terminate
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`related proceedings regarding the Patent before the Board, or any other
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`matter before the USPTO that would be affected by the requested
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`termination of this proceeding.
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`• Terminations, forgoing a Final Written Decision, have been granted even
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`where oral argument had already taken place before the Board. See Callidus
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`Software Inc. v. Versata Software, Inc., et al., CBM2013-00052, Paper 50
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`(PTAB Nov. 24, 2014) (terminating proceeding after Oral Argument); Clio
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`USA, Inc. v. Procter and Gamble Co., IPR2013-00438, Paper 57 (PTAB
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`Oct. 31, 2014) (same); Volusion, Inc. v. Versata Software, Inc., CBM2013-
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`00017, Paper 53 (PTAB June 17, 2014) and CBM2013-00018, Paper 52
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`(PTAB June 17, 2014) (same).
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`• Pursuant to the Settlement Agreement, the Parties are required to seek
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`authorization from the Board to file this Motion to Terminate, and have
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`received such authorization. Petitioner has also agreed not to participate in
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`the IPR proceedings involving the Patent.
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`The Settlement Agreement, Exhibit 2101, has been made in writing, and a
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`true and correct copy shall be filed with this Office as business confidential
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`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)-(c). The
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`Parties certify that there are no collateral agreements or understandings made in
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`4
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`connection with, or in contemplation of, the termination of the inter partes review.
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`IPR2019-00461
`Joint Motion to Terminate
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`For the foregoing reasons, the Parties jointly and respectfully request that the
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`Board terminate the instant proceeding.
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`Date: June 20, 2019
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`Date: June 20, 2019
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`
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`Respectfully submitted,
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`/s/ James R. Sobieraj
`James R. Sobieraj, Reg. No. 30,805
`BRINKS GILSON & LIONE
`NBC Tower, Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611-5599
`Telephone +1-312-4200
`jsobieraj@brinksgilson.com
`
`Lead Counsel For Petitioner
`
`/s/ Kenneth J. Weatherwax
`
`Kenneth J. Weatherwax (Reg. No. 54,528)
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`Telephone: +1 310-307-4500
`weatherwax@lowensteinweatherwax.com
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`Lead Counsel for Patent Owner
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`5
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`IPR2019-00461
`Joint Motion to Terminate
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the following document(s)
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`was served on the date signed below:
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
`EXHIBIT 2101
`The names and addresses of the parties being served are as follows:
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`
`
`
`
`James R. Sobieraj
`Jon H. Beaupré
`
`Yuezhong Feng
`
`Andrea Shoffstall
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`
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`jsobieraj@brinksgilson.com
`jbeaupre@brinksgilson.com
`yfeng@brinksgilson.com
`ashoffstall@brinksgilson.com
`ZTE_SevenIPRs@brinksgilson.com
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`Respectfully submitted,
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` / Patrick Maloney /
`
`Date: June 20, 2019
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`6
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