HTC Corporationv.Wireless Mobile Device LLC

Patent Trials and Appeals BoardAug 1, 2014

10222450 - (D) (P.T.A.B. Aug. 1, 2014)

Trials@uspto.gov Paper 10 571-272-7822 Entered: August 1, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ HTC CORPORATION and HTC AMERICA, INC., Petitioner, v. WIRELESS MOBILE DEVICES LLC and TELECOMMUNICATION SYSTEMS, INC., Patent Owner _______________ Case IPR2014-00622, Patent 7,082,365 B2 Case IPR2014-00623, Patent 7,321,826 B2 Case IPR2014-00624, Patent 8,014,939 B2 Case IPR2014-00625, Patent 8,301,371 B2 Case IPR2014-00627, Patent 6,560,604 B1 Case IPR2014-00640, Patent 7,856,315 B2 _______________ Before PHILIP J. HOFFMANN, MIRIAM L. QUINN, and PATRICK M. BOUCHER, Administrative Patent Judges. QUINN, Administrative Patent Judge. JUDGMENT Termination of Proceeding 37 C.F.R. § 42.72 Case IPR2014-00622, Patent 7,082,365 B2 Case IPR2014-00623, Patent 7,321,826 B2 Case IPR2014-00624, Patent 8,014,939 B2 Case IPR2014-00625, Patent 8,301,371 B2 Case IPR2014-00627, Patent 6,560,604 B1 Case IPR2014-00640, Patent 7,856,315 B2 2 The parties have filed a joint motion to terminate the instant proceedings pursuant to the parties’ settlement of their dispute.1 The parties also filed a true copy of their written Settlement Agreement, made in connection with the termination of the instant proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Exhibit 1. Additionally, in response to the Order to Clarify Motion to Terminate (Paper 7), the parties filed a Patent Rights Agreement as Exhibit 3 and submitted a joint request to have their Settlement Agreement and Patent Rights Agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Papers 6, 9. The instant proceedings are in the preliminary stage. The Board has not determined whether to institute trial in the instant requests for inter partes review of US Patent Nos. 7,082,365, 7,321,826, 8,014,939, 8,301,371, 6,560,604, and 7,856,315 (“the challenged patents”). In their joint motion to terminate, the parties indicate that they have settled their dispute concerning the challenged patents, and the parties agree that the instant proceedings should be terminated as to both parties because the Board has not decided the merits of the proceedings. Petitioner does not appear to be the sole defendant in the related litigation. Nevertheless, 1 IPR2014-00622, Paper 5; IPR2014-00623, Paper 5; IPR2014-00624, Paper 8; IPR2014-00625, Paper 5; IPR2014-0627, Paper 5; IPR2014-0640, Paper 5. The filings in each of these proceedings are identical, and, therefore, we refer from here on to the filings in case IPR2014-00622. Case IPR2014-00622, Patent 7,082,365 B2 Case IPR2014-00623, Patent 7,321,826 B2 Case IPR2014-00624, Patent 8,014,939 B2 Case IPR2014-00625, Patent 8,301,371 B2 Case IPR2014-00627, Patent 6,560,604 B1 Case IPR2014-00640, Patent 7,856,315 B2 3 Petitioner asserts that it will not participate further in these proceedings, even if they are not terminated with respect to Petitioner. Id. at 5. Patent Owner filed as Exhibit 2 to the joint motion to terminate an explanation of why termination is appropriate. Exhibit 2 (filed attached to Paper 5). In particular, Patent Owner contends that there are no adverse positions to be resolved and that no interests of the parties will be served in continuing the instant proceedings. Id. According to Patent Owner, termination will be in the interest of judicial economy and in the interest of minimizing the costs associated with pursuing these proceedings. Id. Upon consideration of the requests before us and at this early juncture, terminating the instant proceedings with regard to both Petitioner and Patent Owner promotes efficiency and minimizes unnecessary costs. Based on the facts of this case, it is appropriate to enter judgment.2 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate IPR2014-00622, IPR2014-00623, IPR2014-00624, IPR2014-00625, IPR2014-00627, and IPR2014-00640 are granted; FURTHER ORDERED that the instant proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner; and 2 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. Case IPR2014-00622, Patent 7,082,365 B2 Case IPR2014-00623, Patent 7,321,826 B2 Case IPR2014-00624, Patent 8,014,939 B2 Case IPR2014-00625, Patent 8,301,371 B2 Case IPR2014-00627, Patent 6,560,604 B1 Case IPR2014-00640, Patent 7,856,315 B2 4 FURTHER ORDERED that the parties’ joint requests that the Settlement Agreement and Patent Rights Agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted. PETITIONER: Bing Ai (Lead Counsel) Jack Ko (Back-up Counsel) Kevin Patariu (Back-up Counsel) Babak Tehranchi (Back-up Counsel) Ai-ptab@perkinscoie.com CKo@perkinscoie.com KPatariu@perkinscoie.com BTehranchi@perkinscoie.com PERKINS COIE LLP PATENT OWNER: William Bollman (Lead Counsel) bollman@mdslaw.com MANELLI SELTER PLLC

HTC Corporation v. Wireless Mobile Device LLC