Trial@uspto.gov
`571-272-7822
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` Paper 35
` Entered: September 3, 2021
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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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`DELL INC., ZTE (USA) INC., and ZTE CORPORATION,
`Petitioner
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)1
`
`
`Before TERRENCE W. MCMILLIN, AMANDA F. WIEKER,
`MONICA S. ULLAGADDI, and RUSSELL E. CASS,
`Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`37 C.F.R. § 317; § 42.74
`
`
`1 This Order addresses issues that are the same in the above-captioned proceedings.
`The parties are not authorized to use a multi-case caption. Moreover, this is not an
`expanded panel. Each of the four listed judges are part of three-judge panels
`assigned to the listed proceedings.
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`INTRODUCTION
`I.
`
`On August 24, 2021, ZTE Corporation, ZTE (USA) Inc., and Patent Owner
`(hereinafter “Joint Movants”) filed, in each of the above-identified proceedings, a
`Joint Motion to Terminate the Proceeding and Reconstitute Petitioner as Dell Inc.
`due to settlement. See, e.g., IPR2020-01157, Paper 32 (“Motion”).2 The Joint
`Movants also filed, on August 24, 2021, a true copy of a settlement agreement and
`a Joint Request that the Settlement Agreement be Treated as Business Confidential
`Information and be Kept Separate under 35 U.S.C. § 317(b). See, e.g., IPR2020-
`01157, Ex. 2012 (“Settlement Agreement”), Paper 33 (“Request”).
`
`II. DISCUSSION
`The Motion states: “[T]he ZTE entities [i.e., ZTE Corporation and ZTE
`
`(USA) Inc. (see Motion, 1)] and Patent Owner entered into a settlement agreement
`resolving their disputes in connection with the involved patent.” Id. at 3. The
`Motion also states: “Pursuant to 35 U.S.C. § 317(b), filed concurrently herewith as
`Ex. 2012 is a true copy of the settlement agreement entered between Patent Owner
`and the ZTE entities on August 4, 2021.” Id. at 4. The Motion further states:
`“The ZTE entities and Patent Owner certify that there are no collateral agreements
`or understandings made in connection with, or in contemplation of, the termination
`of the inter partes review.” Id. The Motion requests termination of the
`proceedings with respect to the ZTE entities. Id. at 5.
`
`
`2 For purposes of expediency, we cite to papers and exhibits filed in IPR2020-
`01157, unless otherwise noted. The Parties filed similar papers and exhibits in
`each of the above-identified proceedings.
`
`-2-
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`

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`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`Generally, the Board expects that a proceeding will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits of the
`proceeding. PTAB Consolidated Trial Practice Guide, 86 (November 2019).3
`Here, although the Board has instituted inter partes review of the challenged
`patents, the Board has not decided the merits of these proceedings. Under these
`circumstances, we grant the Motion to terminate each proceeding, with respect to
`the ZTE entities. Accordingly, Petitioner is reconstituted as Dell Inc.
`Additionally, in the Request, the Joint Movants:
`jointly request that the settlement agreement be kept as a separate paper
`to be made available only under the provisions of 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c). The settlement agreement has been filed for
`access “Access only the board.” The Joint Movants further jointly
`request that the Board order that in the event a person or entity makes
`a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to
`the settlement agreement, that any such written request be served upon
`the parties on the day the written request is provided to the Board.
`Paper 33, 1. We grant-in-part the Request. The Settlement Agreement in each
`proceeding shall be kept separate from the files of U.S. Patent No. 7,274,933 B2,
`U.S. Patent No. 7,460,868 B2, U.S. Patent No. 7,596,375 B2, U.S. Patent
`No. 8,275,374 B2, U.S. Patent No. 8,472,955 B2, and U.S. Patent No. 8,948,756
`B2, and will be made available only under the provisions of 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c).
`However, we deny the portion of the Request seeking an order from the
`Board that, in the event a person or entity makes a written request as stated in
`
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`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`-3-
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`

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`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`37 C.F.R. § 42.74(c)(1)–(2) for access to the Settlement Agreement, any such
`written request be served upon the parties on the day the written request is
`provided to the Board. Neither the statute nor the rule includes such a requirement.
`
`III. ORDER
`In view of the foregoing, it is:
`ORDERED that the Joint Motion to Terminate the Proceeding and
`
`Reconstitute Petitioner as Dell Inc. in each of the above-identified proceedings is
`granted with respect to ZTE Corporation and ZTE (USA) Inc., and that ZTE
`Corporation and ZTE (USA) Inc. are herein terminated from these proceedings;
`
`FURTHER ORDERED that the Joint Request that the Settlement Agreement
`be Treated as Business Confidential Information and be Kept Separate under
`35 U.S.C. § 317(b) in each of the above-identified proceedings is granted-in-part
`and denied-in-part, in the manner noted above; and
`FURTHER ORDERED that the Settlement Agreement in each proceeding
`shall be kept separate from the files of U.S. Patent No. 7,274,933 B2, U.S. Patent
`No. 7,460,868 B2, U.S. Patent No. 7,596,375 B2, U.S. Patent No. 8,275,374 B2,
`U.S. Patent No. 8,472,955 B2, and U.S. Patent No. 8,948,756 B2, and will be made
`available only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
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`-4-
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`

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`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`For PETITIONER:
`Brian M. Buroker
`Paul Torchia
`Nathan R. Curtis
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`ptorchia@gibsondunn.com
`ncurtis@gibsondunn.com
`
`John R. Hutchins
`C. Andy Mu
`Wesley W. Jones
`BANNER & WITCOFF, LTD.
`jhutchins@bannerwitcoff.com
`amu@bannerwitcoff.com
`wjones@bannerwitcoff.com
`
`For PATENT OWNER:
`
`Timothy Devlin
`Neil Benchell
`Stephanie Berger
`DEVLIN LAW FIRM LLC
`td-ptab@devlinlawfirm.com
`nbenchell@devlinlawfirm.com
`sberger@devlinlawfirm.com
`
`
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`-5-
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