Huawei Technologies Co., Ltd.v.Spherix Incorporated

Patent Trial and Appeal Board

Sep 24, 2015

09405982 (P.T.A.B. Sep. 24, 2015)

Trials@uspto.gov
571-272-7822
Paper No. 11
Date Entered: September 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HUAWEI TECHNOLOGIES CO., LTD. and HUAWEI ENTERPRISE USA,
Petitioner,

v.

SPHERIX INCORPORATED,
Patent Owner.
____________

Case IPR2015-01382
Patent 6,578,086 B1
____________

Before MICHAEL R. ZECHER, JENNIFER MEYER CHAGNON, and
DANIEL J. GALLIGAN Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Termination of the Proceeding
37 C.F.R. §§ 42.72, 42.74

IPR2015-01382
Patent 6,578,086 B1

2

I. DISCUSSION
On September 18, 2015, the parties filed a Joint Motion to Terminate this
proceeding (Paper 9), a copy of the parties’ settlement agreement (Ex. 1009), and a
Motion to Seal (Paper 8) that includes a request to treat the settlement agreement
as business confidential information under 37 C.F.R. § 42.74(c). After reviewing
the settlement agreement submitted by the parties, we informed the parties via
email correspondence on September 21, 2015, that these papers were insufficient
because the settlement agreement was redacted. See 35 U.S.C. § 317(b) (requiring
a “true copy” of a settlement agreement be filed in the Office before the
termination of an inter partes review); see also APTwater, Inc. v. ThinkVillage-
Kerfoot, LLC, Case IPR2014-00132, slip op. at 2 (PTAB June 10, 2014) (Paper 17)
(“A redacted version of the settlement agreement will not be accepted as a true
copy of the settlement agreement.”). We instructed the parties to file a non-
redacted version of the settlement agreement. On September 21, 2015, the parties
complied with our instructions by filing a renewed Joint Motion to Terminate this
proceeding (Paper 10), and a true copy of the parties’ settlement agreement
(Ex. 1010).
1
The renewed Joint Motion to Terminate this proceeding also includes
a joint request to treat the settlement agreement as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 10, 4–5.
This proceeding is still in its preliminary stages. Patent Owner, Spherix
Incorporated, did not file a Preliminary Response, and we have not yet entered a
decision whether or not to institute an inter partes review. In the renewed Joint
Motion to Terminate this proceeding, the parties represent that they have settled
the related district court case involving U.S. Patent No. 6,578,086 B1 (“the

1
The first-filed Joint Motion to Terminate this proceeding (Paper 9) and the
redacted settlement agreement (Ex. 1009) will be expunged from the record of this
proceeding.
IPR2015-01382
Patent 6,578,086 B1

3

’086 patent”). Paper 10, 3–4. The parties also represent that the ’086 patent is not
involved in any other proceedings currently before the Office. Id. at 4. Under
these circumstances, we determine that it is appropriate to terminate this
proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.

II. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Motion to Seal Exhibit 1010 is GRANTED and, as a
result, the parties’ settlement agreement that is Exhibit 1010 will be treated as
business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c);
FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.7(a), Paper 9 and
Exhibit 1009 are EXPUNGED from the record of this proceeding; and
FURTHER ORDERED that the renewed Joint Motion to Terminate this
proceeding is GRANTED, and this proceeding is hereby terminated.

IPR2015-01382
Patent 6,578,086 B1

4

For PETITIONER:

M. Scott Fuller
Roy Hardin
Paul Lein
Darrian Campbell
Locke Lord LLP
sfuller@lockelord.com
rhardin@lockelord.com
plein@lockelord.com
dcampbell@lockelord.com

For PATENT OWNER:

Donald McPhail
Carl Wischhusen
Cozen O’Connor
DMcphail@cozen.com
CWischhusen@cozen.com