VERIZON PATENT AND LICENSING INC.

Patent Trials and Appeals Board

Sep 9, 2021

IPR2021-00617 (P.T.A.B. Sep. 9, 2021)

Trials@uspto.gov Paper: 9
571-272-7822 Date: September 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HUAWEI TECHNOLOGIES CO. LTD.,
Petitioner,
v.
VERIZON PATENT AND LICENSING INC.,
Patent Owner.

IPR2021-00616 (Patent 8,121,111 B2)
IPR2021-00617 (Patent 8,983,288 B2)1

Before MICHAEL R. ZECHER, TERRENCE W. McMILLIN, and SCOTT
RAEVSKY, Administrative Patent Judges.
Opinion for the Board by Administrative Patent Judge McMILLIN.

Opinion dissenting filed by Administrative Patent Judge ZECHER.

McMILLIN, Administrative Patent Judge.
ORDER
Granting Joint Motions to Dismiss
and Terminating the Proceedings
37 C.F.R § 42.71(a)

1 The parties are not authorized to use this form of caption and shall make
separate filings in each case.
IPR2021-00616 (Patent 8,121,111 B2)
IPR2021-00617 (Patent 8,983,288 B2)

2
On August 20, 2021, as authorized by the Board (Ex. 3002), the
parties filed a Joint Motion to Dismiss Petition for Inter Partes Review
under 37 C.F.R. § 42.71(a) in both of the proceedings identified above.
Paper 8 (“Motion” or “Mot.”).2 In the Motion, the parties “jointly move
under 37 C.F.R. § 42.71(a) to dismiss the petition for inter partes review
filed March 26, 2021, without adverse judgment and without a decision on
institution.” Mot. 1. The parties contend that, “[t]here is good cause for
dismissal here because the inter partes review is in its pre-institution phase,
and both parties are in agreement as to this outcome.” Id.
These proceedings are in their preliminary phase and a decision on
institution of inter partes review has not yet been entered in either
proceeding. And, we determine that good cause for dismissal and
termination exists for the reasons stated by the parties in the Motion and
because dismissal and termination under the present circumstances will
facilitate the just, speedy, and inexpensive resolution of these proceedings.
See 37 C.F.R. § 42.1(b).

2 The Motion in IPR2021-00616 is referred to and cited in this Order. The
Motion in IPR2021-00617 is substantively identical. The posture of, and the
records in, these two proceedings are for all purposes material to the Motion
the same.
IPR2021-00616 (Patent 8,121,111 B2)
IPR2021-00617 (Patent 8,983,288 B2)

3
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion[s] to Dismiss Petition for Inter
Partes Review under 37 C.F.R. § 42.71(a) (Paper 8) filed in IPR2021-00616
and IPR2021-00617 are granted; and
FURTHER ORDERED that the Petition[s] (Paper 2) in IPR2021-
00616 and IPR2021-00617 are dismissed, and both proceedings are
terminated.
IPR2021-00616 (Patent 8,121,111 B2)
IPR2021-00617 (Patent 8,983,288 B2)

4
For PETITIONER:
Scott McKeown
James Davis
Daniel Richards
ROPES & GRAY
Scott.mckeown@ropesgray.com
James.l.davis@ropesgray.com
Daniel.richards@ropesgray.com

For PATENT OWNER:

Dinesh Melwani
Andrew Sutton
BOOKOFF MCANDREWS, PLLC
dmelwani@bomcip.com
asutton@bomcip.com

IPR2021-00616 (Patent 8,121,111 B2)
IPR2021-00617 (Patent 8,983,288 B2)

5
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HUAWEI TECHNOLOGIES CO. LTD.,
Petitioner,
v.
VERIZON PATENT AND LICENSING INC.,
Patent Owner.

ZECHER, Administrative Patent Judge, dissenting.
Because I would follow the long-standing practice of requiring the
parties to file a written settlement agreement prior to dismissing the
petitions, thereby resulting in termination of these proceedings, I respectfully
dissent.
As the majority explains above, the parties filed a Joint Motion to
Dismiss Petition for Inter Partes Review Under 37 C.F.R. § 42.71(a) in both
proceedings. Paper 8 (“Motion” or “Mot.”).3 In the Motion, the parties rely
on the majority holding in Samsung Elecs. Co. v. Telefonaktiebolaget LM
Ericsson, IPR2021-00446, Paper 7 at 5 (PTAB Aug. 3, 2021) (Order—
Dismissal Prior to Institution of Trial) (“Samsung”) to argue that “a
settlement agreement is not required to be filed here because this motion to
dismiss the petition is brought under, and seeks dismissal pursuant to,
37 C.F.R. § 42.71(a).” Mot. 2. The majority holding in the Samsung case,

3 Unless otherwise noted, all citations are to the papers filed in IPR2021-
00616. Similar papers were filed in IPR2021-00617.
IPR2021-00616 (Patent 8,121,111 B2)
IPR2021-00617 (Patent 8,983,288 B2)

6
however, has not been designated precedential and, therefore, is not binding
on this panel. Absent a precedential designation or a clear written directive
from the person performing the functions and duties of the Under Secretary
of Commerce for Intellectual Property and Director of the U.S. Patent and
Trademark Office, I would not treat the Samsung case as binding authority.
Instead, I agree with the dissent in the Samsung case authored by my
colleague, Judge Miriam L. Quinn, in which she explains how 37 C.F.R.
§ 42.74(b)—aptly titled “Agreements in writing”—applies to a preliminary
proceeding, as well as the underlying policy considerations behind requiring
the parties to file a written settlement agreement prior to dismissing a
petition, thereby resulting in termination of the proceeding. Samsung at 6–
12. I share Judge Quinn’s concern that deviating from the long-standing
practice of requiring the parties to file a written settlement agreement prior
to dismissing a petition would make terminating a preliminary proceeding
by joint request of the parties dependent on how Board panels view the
relevance of 37 C.F.R. §§ 42.71(a) and 42.74(b).
Accordingly, I respectfully dissent.