`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ericsson Inc.
`
`Petitioner
`
`v.
`
`Electronics and Telecommunications Research Institute
`
`Patent Owner
`
`Patent No. 9,603,174
`Filing Date: September 12, 2014
`Issue Date: March 21, 2017
`
`Title: ERROR CONTROL METHOD, MEDIUM ACCESS CONTROL (MAC)
`FRAME DESIGNING METHOD, AND TERMINAL REGISTRATION
`METHOD IN WIRELESS COMMUNICATION SYSTEM, AND RECORDING
`MEDIUM
`
`Inter Partes Review No. IPR2020-00251
`
`UNOPPOSED MOTION TO DISMISS
`PETITION FOR INTER PARTES REVIEW
`
`
`
`IPR2020-00251
`Petitioner’s Motion to Dismiss
`
`I.
`
`INTRODUCTION
`
`The Board authorized Petitioner to file a motion to dismiss the present petition
`
`for inter partes review and thereby terminate IPR2020-00251 directed to U.S. Patent
`
`No. 9,603,174 (“the ’174 Patent”). (Board email dated February 27, 2020). Petitioner
`
`and Exclusive Licensee Sol IP have conferred via email, and Sol IP does not oppose
`
`the relief requested in this motion. Petitioner now so moves and respectfully requests
`
`that the Board dismiss the present petition and terminate IPR2020-00251 consistent
`
`with Board’s precedent allowing petitioners to withdraw IPR petitions pre-
`
`institution. This proceeding is in its preliminary phase, Sol IP has not yet filed a
`
`Preliminary Response, and the Board has not yet reached the merits by issuing a
`
`decision on institution.
`
`II. BACKGROUND AND RELATED IPR PROCEEDINGS
`The present petition is one of thirteen petitions that Petitioner filed on
`
`December 10, 2019. The parties have entered into a confidential settlement
`
`agreement (“Settlement Agreement”) that will resolve the parties’ dispute regarding
`
`the challenged patents, including the related district court litigation in which the ’174
`
`Patent was asserted against Petitioner (Case Nos. 2:18-cv-00526 (E.D. Tex.), 2:18-
`
`cv-00527 (E.D. Tex.), and 2:18-cv-00528 (E.D. Tex.)). This Settlement Agreement
`
`has been made in writing, and a true and correct copy shall be filed with this Office
`
`as business confidential pursuant to 35 U.S.C. § 317(b). There are no other
`
`1
`
`
`
`IPR2020-00251
`Petitioner’s Motion to Dismiss
`
`agreements, oral or written, between the parties made in connection with, or in
`
`contemplation of, the termination of this proceeding. Pursuant to the terms of the
`
`Settlement Agreement, the parties filed Stipulations of Dismissal in the
`
`aforementioned cases, and the parties’ disputes have been dismissed by the court.
`
`Moreover, Petitioner is preparing identical Unopposed Motions to Dismiss Petition
`
`for Inter Partes Review in each of the twelve other contemporaneously-filed
`
`proceedings currently pending before the Board:
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`12.
`
`IPR2020-00237;
`
`IPR2020-00238;
`
`IPR2020-00239;
`
`IPR2020-00240;
`
`IPR2020-00241;
`
`IPR2020-00242;
`
`IPR2020-00243;
`
`IPR2020-00244;
`
`IPR2020-00249;
`
`IPR2020-00250;
`
`IPR2020-00252; and
`
`IPR2020-00253.
`
`2
`
`
`
`IPR2020-00251
`Petitioner’s Motion to Dismiss
`
`III. ARGUMENT
`
`Good cause exists to dismiss the present petition and terminate IPR2020-
`
`00251. The proceeding is in its preliminary stage and Exclusive Licnesee Sol IP has
`
`not yet filed a Preliminary Response. “The Board may . . . dismiss any petition.” 37
`
`C.F.R. 42.71(a); see also 37 C.F.R. § 42.72 (The Board “may terminate a trial
`
`without rendering a final written decision, where appropriate.”). Further, the rules
`
`governing IPR proceedings “shall be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” Id. § 42.1(b). In determining whether
`
`a termination request is “appropriate,” the Board primarily examines the stage and
`
`nature of the proceedings. See, e.g., Samsung Elecs. Co. v. NVIDIA Corp., IPR2015-
`
`01270, Paper 12 at 3 (Dec. 9, 2015). Here, dismissal will preserve both Board and
`
`party resources, particularly in view of the early stage of the proceeding.
`
`The Board has precedent for allowing petitioners to withdraw IPR petitions
`
`pre-institution when proceedings are in a similar posture. See, e.g., Intel Corp. v.
`
`Tela Innovations, Inc., IPR2019-01221, Paper 21 (Jan. 13, 2020); Huawei
`
`Technologies Co. Ltd v. Harris Global Communications, Inc., IPR2019-01512,
`
`Paper 8 (Jan. 10, 2020); Pfizer, Inc., v. Biogen, Inc., IPR2018-00231, Paper No. 11
`
`(June 6, 2018); Darfon Electronics Corp. v. Lite-On Technology Corp., IPR2018-
`
`01797, Paper No. 8 (January 9, 20019); Turner Sports Interactive, Inc. v. Tagi
`
`Ventures, LLC, IPR2017-01010, Paper No. 7 (July 31, 2017). Moreover, withdrawal
`
`3
`
`
`
`of the present petition does not prejudice the Patent Owner or its Exclusive Licensee,
`
`IPR2020-00251
`Petitioner’s Motion to Dismiss
`
`who do not oppose the filing of this motion.
`
`IV. CONCLUSION
`
`For the reasons set forth herein, Petitioner Ericsson Inc. respectfully requests
`
`that the Board grant the Unopposed Motion to Dismiss Petition for Inter Partes
`
`Review in Case Number IPR2020-00251 and terminate the proceeding in its entirety.
`
`Dated: March 2, 2020
`
`WINSTON & STRAWN LLP
`200 Park Avenue
`New York, NY 10166-4193
`Tel: (212) 294-2603
`Fax: (212) 294-4700
`Email:
`Winston-Ericsson-IPRs@winston.com
`
`Respectfully submitted,
`
`/s/ Pejman Sharifi
`Pejman Sharifi
`Reg. No. 45,097
`
`Lead Counsel for Petitioner
`
`4
`
`
`
`IPR2020-00251
`Petitioner’s Motion to Dismiss
`
`CERTIFICATE OF SERVICE
`
`I certify that on March 2, 2020, I will cause a copy of the foregoing document,
`
`including any exhibits referred to therein, to be served via electronic mail, as
`
`previously consented to by Patent Owner and Exclusive Licensee Sol IP, upon the
`
`following:
`
`Alexander J. Hadjis
`CPDocketHadjis@oblon.com
`
`W. Todd Baker
`CPDocketBaker@oblon.com
`
`Robert Mattson
`CPDocketMattson@oblon.com
`
`Dated: March 2, 2020
`
`WINSTON & STRAWN LLP
`200 Park Avenue
`New York, NY 10166-4193
`Tel: (212) 294-2603
`Fax: (212) 294-4700
`Email:
`Winston-Ericsson-IPRs@winston.com
`
`Respectfully submitted,
`
`/s/ Pejman Sharifi
`Pejman Sharifi
`Reg. No. 45,097
`
`Lead Counsel for Petitioner
`
`5
`
`