IPR2020-01129 (P.T.A.B. Sep. 22, 2021)

Huawei Technologies Co., Ltd.

Patent Trials and Appeals BoardSep 22, 2021

IPR2020-01129 (P.T.A.B. Sep. 22, 2021)

Trials@uspto.gov Paper 13 Tel: 571-272-7822 Entered: September 22, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS, Petitioner, v. HUAWEI DEVICE CO., LTD., Patent Owner. IPR2020-01129 Patent 7,715,832 B2 Before THU A. DANG, TREVOR M. JEFFERSON, and MICHELLE N. WORMMEESTER, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION Granting the Parties’ Joint Motion to Terminate 37 C.F.R. §§ 42.71(a) IPR2020-01129 Patent 7,715,832 B2 2 I. DISCUSSION Petitioner filed a Petition requesting an inter partes review of claims 1–9 of U.S. Patent No. 7,715,832 B2 (Ex. 1001, “the ’832 patent”). Paper 1. We instituted inter partes review on all grounds set forth in the Petition. Paper 9. On April 27, 2021, the parties filed: (1) a Joint Motion to Terminate (Paper 12); and (2) a true copy of the Joint Motion to Dismiss U.S. Patent Nos. 7,715,832 and 8,761,839 and to Dismiss Co-Plaintiff Huawei Device Co., Ltd. filed in the Western Disrtict of Texas. Ex. 1038. Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” It is also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter partes review, the Office may terminate the review. In the Joint Motion to Terminate, the parties indicate that they “jointly moved to dismiss with prejudice the ’832 patent from the district court action.” Paper 12, 1 (quoting Ex. 1038). Although other patents asserted in the district court litigation remain at issue, the parties state that Petitioner will no longer participate in the district court proceeding. Id. at 2. The parties further “certify there is no settlement agreement or other agreements made in connection with, or in contemplation of, the termination of this IPR proceeding” as the district court litigation involving other patents is not yet settled. Id. at 3. We have not yet decided the merits of this proceeding, and a final written decision has not been entered. Even though this proceeding has IPR2020-01129 Patent 7,715,832 B2 3 moved beyond the preliminary stage, the parties have shown adequately that termination of this proceeding is appropriate. Under these particular circumstances, we determine that good cause exists to terminate this proceeding with respect to the parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). ORDER In view of the foregoing, it is hereby: ORDERED the parties’ Joint Motion to Terminate the above- captioned case is granted, pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72. IPR2020-01129 Patent 7,715,832 B2 4 For PETITIONER: James M. Glass John T. McKee Brianne M. Straka QUINN EMANUEL URQUHART & SULLIVAN, LLP jimglass@quinnemanuel.com johnmckee@quinnemanuel.com briannestraka@quinnemanuel.com For PATENT OWNER: Michael T. Hawkins Patrick J. Bisenius Nicholas W. Stephen Jennifer J. Huang Kenneth W. Darby Sangi Park Thomas H. Reger II Brian G. Strand FISH & RICHARDSON P.C. hawkins@fr.com bisenius@fr.com nstephens@fr.com jjh@fr.com kdarby@fr.com spark@fr.com reger@fr.com strand@fr.com