Evolved Wireless LLC

Patent Trials and Appeals Board

Mar 3, 2022

IPR2021-01423 (P.T.A.B. Mar. 3, 2022)

Trials@uspto.gov Paper 10 571-272-7822 Date: March 3, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MOTOROLA MOBILITY LLC, Petitioner, v. EVOLVED WIRELESS LLC, Patent Owner. ____________ IPR2021-01423 Patent RE46,679 E ____________ Before PATRICK M. BOUCHER, TERRENCE W. McMILLIN, and JASON M. REPKO, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION Granting Motion to Terminate Proceeding Before Institution 37 C.F.R. § 42.74 With our authorization, the parties filed a Joint Motion to Terminate this proceeding. Paper 8. “The parties have agreed that this IPR should be dismissed to facilitate settlement discussions.” Id. at 4. With their Joint Motion, the parties also filed a Joint Request to Treat Agreement as Business IPR2021-01423 Patent RE46,679 E 2 Confidential Information, along with what they represent to be “a true copy of the agreed upon terms between the parties.” Paper 9, 1; see Ex. 2013 (“Terms of Agreement”). The parties expressly represent that “[t]here are no other collateral agreements between the parties made in connection with, or in contemplation of, the termination sought.” Paper 8, 2. In addition, the parties note that they have “agreed to mutually terminate [related] proceedings before the International Trade Commission” and that “[t]he parallel district court case . . . is stayed, and the parties have agreed not to proceed with that case nor initiate any further action for a limited amount of time during settlement discussion.” Id. at 1, 3-4. “An 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.” 35 U.S.C. § 317(a). We have reviewed the terms set forth in the filed “Terms of Agreement,” and find it contains confidential business information regarding the “understanding between the patent owner and a petitioner” as referenced by 35 U.S.C. § 317(b). See Ex. 2013. The proceeding is at an early stage, with no decision yet made whether to institute an inter partes review. We accordingly determine that it is appropriate to terminate the proceeding and to treat the filed “Terms of Agreement” as business confidential information pursuant to 35 U.S.C. § 317(b). It is ORDERED that the Joint Motion to Terminate is granted; IPR2021-01423 Patent RE46,679 E 3 FURTHER ORDERED that this proceeding is hereby terminated as to all parties; FURTHER ORDERED that the Joint Request to Treat Agreement as Business Confidential and to Keep Separate is granted; FURTHER ORDERED that the filed “Terms of Agreement” (Ex. 2013) be treated as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and also remain designated as “Parties and Board Only” in the Board’s E2E system. IPR2021-01423 Patent RE46,679 E 4 For PETITIONER: James Heintz DLA PIPER LLP (US) jim.heintz@dlapiper.com For PATENT OWNER: Andrew Wright Brent Bumgardner Barry Bumgardner NELSON BUMGARDNER CONROY PC andrew@nbafirm.com bbumgardner@nbclaw.net barry@nelbum.com