IPR2021-01012 (P.T.A.B. Oct. 20, 2021)

WSOU Investments, LLC D/B/A Brazos Licensing and Development

Patent Trials and Appeals BoardOct 20, 2021

IPR2021-01012 (P.T.A.B. Oct. 20, 2021)

Trials@uspto.gov 571-272-7822 Paper No. 10 Date Entered: October 20, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ HUAWEI TECHNOLOGIES CO., LTD., Petitioner, v. WSOU INVESTMENTS, LLC d/b/a BRAZOS LICENSING AND DEVELOPMENT, Patent Owner ____________ IPR2021-00689; -00690; -00691; -00692; -01012 Patents: 7,933,211 B2; 7,423,962 B2; 7,460,658 B2; 7,406,074 B2; 6,704,304 B11 ____________ THU A. DANG, BRIAN J. McNAMARA, ROBERT J. WEINSCHENK, JOHN A. HUDALLA, JOHN D. HAMANN DECISION Settlement Prior to Institution of Trial Granting Requests to Keep Settlement Agreement Confidential 37 C.F.R. § 42.74 1 This order is to be filed in each case. The parties are not authorized to use this style heading in any subsequent papers. IPR2021-00689; -00690; -00691; -00692; -01012 Patents; 7,933,211 B2; 7,423,962 B2; 7,460,658 B2; 7,406,074 B2; 6,704,304 B1 2 On September 21, 2021, Huawei Technologies Co., Ltd. (“Petitioner”) and WSOU Investments, LLC d/b/a Brazos Licensing and Development (“Patent Owner”) (collectively “the parties”) filed a Joint Notice of Settlement and Motion to Stay All Deadlines in the underlying litigations related to the above-captioned proceedings (“the proceedings”) listed in Table 1 below. On October 12, 2021, during a status conference call concerning the proceedings, the parties reported that they had circulated for execution a settlement agreement and, pursuant to that settlement, they would seek to terminate the proceedings. A decision on institution has not been rendered in any of the proceedings. TABLE 1 Civil Action No. (All cases pending in the W.D. Tex.) Patent Number Proceeding No. Status 6:20-cv-00889- ADA 6,704,304 B1 IPR2021-01012 Institution Decision Pending 6:20-cv-00892- ADA 7,460,658 B2 IPR2021-00691 Institution Decision Pending 6:20-cv-00893- ADA 7,933,211 B2 IPR2021-00689 Institution Decision Pending 6:20-cv-00916- ADA 7,406,074 B2 IPR2021-00692 Institution Decision Pending 6:20-cv-00917- ADA 7,423,962 B2 IPR2021-00690 Institution Decision Pending IPR2021-00689; -00690; -00691; -00692; -01012 Patents; 7,933,211 B2; 7,423,962 B2; 7,460,658 B2; 7,406,074 B2; 6,704,304 B1 3 On October 13, 2021, we authorized the parties to file a Joint Motion to Terminate each of the proceedings. 37 C.F.R. § 42.74(a)–(b). We required that each Joint Motion to Terminate update the Board concerning the status of any litigation or proceeding, including, but not limited to proceedings in the U.S. Patent and Trademark Office, involving the subject patents, and advise the Board whether any litigation or proceeding involving the subject patents is contemplated in the foreseeable future. We also required the Joint Motions to Terminate include a copy of any agreement and include a statement certifying that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the proceeding. We also authorized the parties to file a request that that the written settlement agreement be treated as business confidential information and be kept separate from the files of an involved patents. 37 C.F.R. § 42.74(c). On October 18, 2021, in each of the proceedings, the parties filed the authorized Joint Motion to Terminate along with a copy of the settlement agreement and a request to maintain the settlement agreement as business confidential information. The parties have also represented that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the proceedings. As the proceedings are in the preliminary stage, we find that the parties have explained adequately why termination is appropriate. Moreover, after reviewing the settlement agreement, we find that the settlement agreement contains confidential business information regarding the terms of settlement. We determine that good cause exists to treat the IPR2021-00689; -00690; -00691; -00692; -01012 Patents; 7,933,211 B2; 7,423,962 B2; 7,460,658 B2; 7,406,074 B2; 6,704,304 B1 4 settlement agreement between the parties as business confidential information under 37 C.F.R. § 42.74(c). In consideration of the above, it is ORDERED that, for each of the proceedings, the Joint Motion to Terminate the proceeding is GRANTED and the proceeding is hereby terminated; FURTHER ORDERED that the parties’ joint requests to treat the settlement agreement as business confidential information and to keep the settlement agreement separate from the files of the involved patents under the provisions of 37 C.F.R. § 42.74(c), is GRANTED. For PETITIONER: Michael Hawkins Kenneth Hoover Kim Leung Sangki Park Terry Stalford Rishi Gupta Nicholas Stephens Patrick Bisenius FISH & RICHARDSON P.C. hawkins@fr.com hoover@fr.com leung@fr.com spark@fr.com stalford@fr.com IPR2021-00689; -00690; -00691; -00692; -01012 Patents; 7,933,211 B2; 7,423,962 B2; 7,460,658 B2; 7,406,074 B2; 6,704,304 B1 5 nstephens@fr.com rgupta@fr.com bisenius@fr.com For PATENT OWNER: Ryan Loveless Jeffrey Stephens Brett Mangrum James Etheridge Brian Koide Jeffrey Huang ETHERIDGE LAW GROUP ryan@etheridgelaw.com jstephens@etheridgelaw.com brett@etheridgelaw.com ipteam@etheridgelaw.com brian@etheridgelaw.com jeff@etheridgelaw.com