3G LICENSING S.A.

Patent Trials and Appeals Board

Sep 3, 2021

IPR2020-01157 (P.T.A.B. Sep. 3, 2021)

Trial@uspto.gov Paper 35
571-272-7822 Entered: September 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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)

-2-
I. INTRODUCTION
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.
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)

-3-
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

3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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)

-4-
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).

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)

-5-
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