UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DELL INC.,
`ZTE (USA) INC.,
`AND
`ZTE CORPORATION,
`Petitioner,
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`v.
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`3G LICENSING S.A.,
`Patent Owner.
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`Case IPR2020-01157
`Patent No. 7,274,933
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`JOINT MOTION OF ZTE CORPORATION, ZTE (USA) INC., AND
`PATENT OWNER TO TERMINATE ZTE CORPORATION AND ZTE
`(USA) INC. FROM THE PROCEEDING AND RECONSTITUTE THE
`PETITIONER AS DELL INC. PURSUANT TO 35 U.S.C. § 317(a)
`AND 37 C.F.R. §§ 42.5(a) AND 42.74
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DELL INC.,
`ZTE (USA) INC.,
`AND
`ZTE CORPORATION,
`Petitioner,
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`v.
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`3G LICENSING S.A.,
`Patent Owner.
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`Case IPR2020-01157
`Patent No. 7,274,933
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`JOINT MOTION OF ZTE CORPORATION, ZTE (USA) INC., AND
`PATENT OWNER TO TERMINATE ZTE CORPORATION AND ZTE
`(USA) INC. FROM THE PROCEEDING AND RECONSTITUTE THE
`PETITIONER AS DELL INC. PURSUANT TO 35 U.S.C. § 317(a)
`AND 37 C.F.R. §§ 42.5(a) AND 42.74
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`TABLE OF EXHIBITS
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`Description
`Exhibit
`2001 Declaration of Stu Lipoff in Support of Patent Owner
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`2002 Affidavit of Stephanie Berger
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`2003 Affidavit of Neil Benchell
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`2004 Affidavit of Andrew DeMarco
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`2005 Second Declaration of Stu Lipoff in Support of Patent Owner
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`2006
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`2007
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`3rd Generation Partnership Project; Technical Specification Group
`Core Network; NAS Functions related to Mobile Station (MS) in idle
`mode (Release 7) (3GPP TS 23.122 V7.0.0) (“TS 23.122 V7.0.0”)
`3rd Generation Partnership Project; Universal Mobile
`Telecommunications (UMTS); Characteristics of the USIM
`application (Release 6) (3GPP TS 31.102 V6.8.0) (“TS-31.102
`V6.8.0”)
`2008 “The North American Official Cellular User’s Guide” Available to
`Help Cellular Telephone Users, Business Wire, December 18, 1990
`2009 Amy Zuckerman, Those Black Holes in Your Mobile Phone Service,
`New York Times, December 24, 2000
`Nancy Gohring, Falling Short of Replacement: Wireless Carrier Plans
`Compete with Landline but Don’t Cut it Out of the Equation,
`Telephony, April 27, 2998
`Judy Strausbaugh, Oh, Give me a Cell Phone Where the Signals Won’t
`Roam, Sunday News (Lancaster, PA), May 19, 2002
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`2010
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`2011
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`2012
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` Settlement Agreement dated August 4, 2021
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`ii
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.5(a), and the Board's
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`authorization via email on August 13, 2021, Petitioner constituents ZTE Corporation
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`and ZTE (USA) Inc. ("the ZTE entities"), and Patent Owner, 3G Licensing S.A.
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`(collectively "the Joint Movants"), jointly move that the Board terminate the above-
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`captioned proceeding with respect to the ZTE entities, and dismiss the ZTE entities
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`therefrom, as a result of a settlement between the ZTE entities and Patent Owner.
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`The other party to this proceeding, Petitioner constituent Dell Inc. ("Dell") does not
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`object to dismissing the ZTE entities from this proceeding. Patent Owner and the
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`ZTE entities further move to reconstitute the Petitioner as Dell only.
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`The ZTE entities and Patent Owner are filing concurrently herewith a request
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`that the settlement agreement between the ZTE entities and Patent Owner, submitted
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`as Ex. 2012, be treated as business confidential information and be kept separate
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`from the file of the involved patent, pursuant to 35 U.S.C. 317(b) and 37 C.F.R. §
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`42.74(c).
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`The settlement agreement is being filed as "Available only to board” to
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`preserve the confidentiality of the agreement so that, inter alia, Dell continues to not
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`have access to that agreement.
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`1
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`II.
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`STATEMENT OF FACTS
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`In July of 2019, Patent Owner filed an infringement action against ZTE ("the
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`Litigation") asserting infringement of certain claims of U.S. Patent Nos. 6,529,561
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`(“the ’561 patent”), 7,433,698 (“the ’698 patent”), 8,364,196 (“the ’196 patent”),
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`7,751,803 (“the ’803 patent”), 7,894,443 (“the ’443 patent”), 7,274,933 (“the ’933
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`patent”), 7,460,868 (“the ’868 patent”), 7,596,375 (“the ’375 patent”), 8,275,374
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`(“the ’374 patent”), 8,472,955 (“the ’955 patent”), 8,948,756 (“the ’756 patent”),
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`and 8,897,503 (“the ’503 patent”) (collectively, "the Asserted Patents"). Dell had a
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`separate infringement action involving the Asserted Patents filed against them.
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`Petition at 68-69.
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`Dell, the ZTE entities, and other parties jointly sought inter partes review of
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`the ’803 patent, the ’698 patent, the ’196 patent, the ’561 patent, the ’443 patent, and
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`the ’503 patent as petitioner in inter partes reviews IPR2020-01069, IPR2020-
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`01070,
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`IPR2020-01071,
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`IPR2020-01099,
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`IPR2020-01102,
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`IPR2020-01103,
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`respectively. 1 Dell and the ZTE entities jointly sought inter partes review of the
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`’933 patent, the ’868 patent, the ’375 patent, the ’374 patent, the ’955 patent, and the
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`1 A joint motion to terminate the ZTE entities is also being filed in each of these
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`IPRs.
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`2
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`’756 patent in inter partes reviews IPR2020-01157, IPR2020-01158, IPR2020-
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`01159, IPR2020-01160, IPR2020-01161, and IPR2020-01162, respectively.
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`The Litigation is currently stayed. Dell’s litigation is also stayed. On August
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`4, 2021, the ZTE entities and Patent Owner entered into a settlement agreement
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`resolving their disputes in connection with the involved patent. See Ex. 2012
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`(Confidential). Pursuant to the terms of the settlement agreement, the ZTE entities
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`and Patent Owner agreed, among other things, to jointly move for termination of the
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`above-captioned IPR proceeding with respect to the ZTE entities. Ex. 2012 at 14.
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`III. ARGUMENT
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`A. Legal Standard
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`35 U.S.C. § 317(a) provides that "[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed." In addition, "[t]he Board may
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`determine a proper course of conduct in a proceeding for any situation not
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`specifically covered by this part and may enter non-final orders to administer the
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`proceeding." 37 C.F.R. § 42.5(a).
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`B. The Board Should Dismiss the ZTE entities from the Above-
`Captioned Proceeding
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`As noted above, "[a]n inter partes review instituted under this chapter shall
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`be terminated with respect to any petitioner upon the joint request of the petitioner
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`3
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`and the patent owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed." 35 U.S.C. § 317(a). The present motion
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`is being submitted prior to oral argument and a decision on the merits. Pursuant to
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`35 U.S.C. § 317(b), filed concurrently herewith as Ex. 2012 is a true copy of the
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`settlement agreement entered between Patent Owner and the ZTE entities on August
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`4, 2021. This agreement was made in connection with, or in contemplation of, the
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`termination of the ZTE entities’ participation in the above-captioned proceeding.
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`The ZTE entities and Patent Owner certify that there are no collateral agreements or
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`understandings made in connection with, or in contemplation of, the termination of
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`the inter partes review. Accordingly, the ZTE entities and Patent Owner have
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`complied with the requirements of 35 U.S.C. § 317 and 37 C.F.R. § 42.74, and it is
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`appropriate for the Board to dismiss the ZTE entities from the above-captioned
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`proceeding. See, e.g., Samsung Electronics, Co., Ltd., v. Bitmicro, LLC, IPR2018-
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`01410, Order, Paper 28, 2-3 (May 9, 2019).
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`Moreover, the ZTE entities and Patent Owner are jointly requesting
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`termination as to the ZTE entities, pursuant to settlement between them. 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012) ("There are strong public policy reasons to
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`favor settlement between the parties to a proceeding"). In addition, as part of the
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`settlement, the ZTE entities have agreed not to participate in the IPR proceeding
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`involving this patent.
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`4
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`Finally, dismissing the ZTE entities from the proceedings will not prejudice
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`Dell. As noted above, Dell does not object to the ZTE entities being dismissed from
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`the proceeding.
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`C.
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`Status of Related Matters
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`Related to the present proceeding are inter partes reviews IPR2020-01158,
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`IPR2020-01159, IPR2020-01160, IPR2020-01161, and IPR2020-01162. Patent
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`Owner and the ZTE entities are filing concurrently herewith a joint motion to
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`terminate those proceedings with respect to the ZTE entities.
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`Additionally, Patent Owner and the ZTE entities are filing a joint motion to
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`dismiss the Litigation.
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`Aside from the proceedings identified above, the ZTE entities and Patent
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`Owner are unaware of any other pending related proceeding regarding the involved
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`patent before the Board, or any other matter before the USPTO (or any other
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`tribunal) that would be affected by the requested termination of this proceeding.
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`IV. CONCLUSION
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`The ZTE entities and Patent Owner respectfully request that the Board grant
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`the parties' Joint Motion to terminate the above-captioned proceeding with respect
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`to the ZTE entities. The ZTE entities and Patent Owner further request that the Board
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`reconstitute the Petitioner as Dell alone. Finally, the ZTE entities and Patent Owner
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`request that the Board grant the ZTE entities and Patent Owner's joint request to treat
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`5
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`Dated: August 24, 2021
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`the settlement agreement between the parties as business confidential information
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`and keep it separate from the file of the involved patent.
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`Dated: August 24, 2021
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`Respectfully submitted,
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`By: /John R. Hutchins /
`John R. Hutchins, Reg. No. 43,686
`Counsel for Petitioner ZTE
`Corporation and ZTE (USA) Inc.
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`Respectfully submitted,
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`By: /Timothy Devlin /
`Timothy Devlin, Reg. No. 41,706
`Counsel for Patent Owner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 24,
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`2021 the foregoing document is being served via electronic mail upon the following
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`counsel of record for Petitioner:
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`Counsel for ZTE (USA) Inc. and ZTE Corporation
`LEAD COUNSEL
`BACKUP COUNSEL
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`John R. Hutchins (Reg. 43,686)
`jhutchins@bannerwitcoff.com
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`Banner & Witcoff, Ltd.
`1100 13th Street, NW, Suite 1200
`Washington, DC 20005
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`Tel: 202-824-3000
`Fax: 202-824-3001
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`C. Andy Mu (Reg. 58,216)
`amu@bannerwitcoff.com
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`Wesley W. Jones (Reg. 56,552)
`wjones@bannerwitcoff.com
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`Banner & Witcoff, Ltd.
`1100 13th Street, NW, Suite 1200
`Washington, DC 20005
`Tel: 202-824-3000
`Fax: 202-824-3001
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`Additional email for service: ZTEIPRService@bannerwitcoff.com
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`7
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`LEAD COUNSEL
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`Counsel for Dell, Inc.
`BACKUP COUNSEL
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`Brian M. Buroker (Reg. 39,125)
`bburoker@gibsondunn.com
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`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Ave. NW
`Washington, DC 20036
`Phone: (202) 955-8500
`Fax: (202) 467-0539
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`Paul Torchia (Reg. 55,683)
`ptorchia@gibsondunn.com
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`Gibson, Dunn, & Crutcher LLP
`200 Park Avenue
`New York, NY 10166
`Phone: (212) 351-3953
`Fax: (212) 351-6352
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`Nathan R. Curtis (Reg. 70,471)
`ncurtis@gibsondunn.com
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`Gibson, Dunn & Crutcher LLP
`2001 Ross Ave., Ste. 2100
`Dallas, TX 75201
`Phone: (214) 698-3100
`Fax: (214) 571-2900
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`Additional email for service: Dell-IPRService@gibsondunn.com
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`/s/ Timothy Devlin
`Timothy Devlin
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`8
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