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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Ericsson Inc.
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`Petitioner
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`v.
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`Electronics and Telecommunications Research Institute
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`Patent Owner
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`Patent No. 9,204,438 B2
`Filing Date: April 27, 2015
`Issue Date: December 1, 2015
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`Title: GENERATING DOWNLINK FRAME AND SEARCHING FOR CELL
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`Inter Partes Review No. IPR2020-002391
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`UNOPPOSED MOTION TO DISMISS
`PETITION FOR INTER PARTES REVIEW
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`1 This substantively identical paper is filed in Case Nos.: IPR2020-00237;
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`IPR2020-00238; IPR2020-00240; IPR2020-00241; IPR2020-00242; IPR2020-
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`00243;
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`IPR2020-00244;
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`IPR2020-00249;
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`IPR2020-00250;
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`IPR2020-00251;
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`IPR2020-00252; and IPR2020-00253.
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`I.
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`INTRODUCTION
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`IPR2020-00239
`Petitioner’s Motion to Dismiss
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`The Board authorized Petitioner to file a motion to dismiss the present
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`petition for inter partes review and thereby terminate IPR2020-00239 directed to
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`U.S. Patent No. 9,204,438 B2 (“the ’438 Patent”). (Board email dated February 27,
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`2020). Petitioner and Exclusive Licensee Sol IP have conferred via email, and Sol
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`IP does not oppose the relief requested in this motion. Petitioner now so moves and
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`respectfully requests that the Board dismiss the present petition and terminate
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`IPR2020-00239 consistent with Board’s precedent allowing petitioners
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`to
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`withdraw IPR petitions pre-institution. This proceeding is in its preliminary phase,
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`Sol IP has not yet filed a Preliminary Response, and the Board has not yet reached
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`the merits by issuing a decision on institution.
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`II. BACKGROUND AND RELATED IPR PROCEEDINGS
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`The present petition is one of thirteen petitions that Petitioner filed on
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`December 10, 2019. The parties have entered into a confidential settlement
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`agreement (“Settlement Agreement”) that will resolve the parties’ dispute
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`regarding the challenged patents, including the related district court litigation in
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`which the ’438 Patent was asserted against Petitioner (Case Nos. 2:18-cv-00526
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`(E.D. Tex.), 2:18-cv-00527 (E.D. Tex.), and 2:18-cv-00528 (E.D. Tex.)). This
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`Settlement Agreement has been made in writing, and a true and correct copy shall
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`be filed with this Office as business confidential pursuant to 35 U.S.C. § 317(b).
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`1
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`
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`IPR2020-00239
`Petitioner’s Motion to Dismiss
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`There are no other agreements, oral or written, between the parties made in
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`connection with, or in contemplation of, the termination of this proceeding.
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`Pursuant to the terms of the Settlement Agreement, the parties filed Stipulations of
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`Dismissal in the aforementioned cases, and the parties’ disputes have been
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`dismissed by the court. Moreover, Petitioner is preparing identical Unopposed
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`Motions to Dismiss Petition for Inter Partes Review in each of the twelve other
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`contemporaneously-filed proceedings currently pending before the Board:
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`IPR2020-00237;
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`IPR2020-00238;
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`IPR2020-00240;
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`IPR2020-00241;
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`IPR2020-00242;
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`IPR2020-00243;
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`IPR2020-00244;
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`IPR2020-00249;
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`IPR2020-00250;
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`10.
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`IPR2020-00251;
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`11.
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`IPR2020-00252; and
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`12.
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`IPR2020-00253.
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`2
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`III. ARGUMENT
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`IPR2020-00239
`Petitioner’s Motion to Dismiss
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`Good cause exists to dismiss the present petition and terminate IPR2020-
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`00239. The proceeding is in its preliminary stage and Exclusive Licnesee Sol IP
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`has not yet filed a Preliminary Response. “The Board may . . . dismiss any
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`petition.” 37 C.F.R. 42.71(a); see also 37 C.F.R. § 42.72 (The Board “may
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`terminate a trial without rendering a final written decision, where appropriate.”).
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`Further, the rules governing IPR proceedings “shall be construed to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” Id. § 42.1(b). In
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`determining whether a termination request is “appropriate,” the Board primarily
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`examines the stage and nature of the proceedings. See, e.g., Samsung Elecs. Co. v.
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`NVIDIA Corp., IPR2015-01270, Paper 12 at 3 (Dec. 9, 2015). Here, dismissal will
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`preserve both Board and party resources, particularly in view of the early stage of
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`the proceeding.
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`The Board has precedent for allowing petitioners to withdraw IPR petitions
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`pre-institution when proceedings are in a similar posture. See, e.g., Intel Corp. v.
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`Tela Innovations, Inc., IPR2019-01221, Paper 21 (Jan. 13, 2020); Huawei
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`Technologies Co. Ltd v. Harris Global Communications, Inc., IPR2019-01512,
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`Paper 8 (Jan. 10, 2020); Pfizer, Inc., v. Biogen, Inc., IPR2018-00231, Paper No. 11
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`(June 6, 2018); Darfon Electronics Corp. v. Lite-On Technology Corp., IPR2018-
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`01797, Paper No. 8 (January 9, 20019); Turner Sports Interactive, Inc. v. Tagi
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`3
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`
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`IPR2020-00239
`Petitioner’s Motion to Dismiss
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`Ventures, LLC, IPR2017-01010, Paper No. 7 (July 31, 2017). Moreover,
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`withdrawal of the present petition does not prejudice the Patent Owner or its
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`Exclusive Licensee, who do not oppose the filing of this motion.
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`IV. CONCLUSION
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`For the reasons set forth herein, Petitioner Ericsson Inc. respectfully requests
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`that the Board grant the Unopposed Motion to Dismiss Petition for Inter Partes
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`Review in Case Number IPR2020-00239 and terminate the proceeding in its
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`entirety.
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`Dated: March 2, 2020
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`Respectfully submitted,
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`By: /s/ Ted Stevenson
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`Theodore Stevenson, III, Reg. No. 39,040
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`4
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`IPR2020-00239
`Petitioner’s Motion to Dismiss
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`CERTIFICATE OF SERVICE
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`I certify that on March 2, 2020, I will cause a copy of the foregoing
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`document, including any exhibits referred to therein, to be served via electronic
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`mail, as previously consented to by Patent Owner and Exclusive Licensee Sol IP,
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`upon the following:
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`Richard F. Giunta
`RGiunta-PTAB@wolfgreenfield.com
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`Elisabeth H. Hunt
`EHunt-PTAB@wolfgreenfield.com
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`Dated: March 2, 2020
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`By: /s/ Scott W. Hejny
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`Scott W. Hejny, Reg. No. 45,882
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`5
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