Nokia Technologies Oy

Patent Trials and Appeals BoardMay 5, 2021

IPR2020-01096 (P.T.A.B. May. 5, 2021)

Trials@uspto.gov Paper 15 Tel: 571-272-7822 Date: May 5, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD LENOVO (UNITED STATES) INC., Petitioner, v. NOKIA TECHNOLOGIES OY, Patent Owner. IPR2020-01096 Patent 7,263,125 B2 Before MICHAEL R. ZECHER, SCOTT B. HOWARD, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. TERMINATION Due to Settlement after Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-01096 Patent 7,263,125 B2 2 Petitioner, Lenovo (United States) Inc., and Patent Owner, Nokia Technologies Oy, jointly request termination of IPR2020-01096. Paper 12 (“Motion”). With the Motion, the parties filed what they indicate is a true and correct copy of a written settlement agreement. Ex. 1027 (“Settlement Agreement”), Ex. 1028 (“Patent Agreement Terms”). The parties also filed a joint request to have the Settlement Agreement and Patent Agreement Terms treated as business confidential information under 37 C.F.R. § 42.74(c). Paper 13. The Board generally expects that a case will terminate after the filing of a settlement agreement, unless the Board has already decided the merits. See Patent Trial and Appeal Board Consolidated Trial Practice Guide 86 (Nov. 20, 2019), available at http://www.uspto.gov/ TrialPracticeGuideConsolidated (citing 35 U.S.C. §§ 317(a), 327). Here, we have not decided the merits. The parties represent that the Settlement Agreement and Patent Agreement Terms resolve all of their disputes concerning U.S. Patent No. 7,263,125 B2 (“the ’125 patent”). Motion 2–3. According to the Motion, “[t]he parties have agreed to the dismissal of all claims” in the patent infringement lawsuit alleging infringement of the ’125 patent in the United States District Court for the Eastern District of North Carolina, captioned Nokia Technologies Oy v. Lenovo (Shanghai) Electronics. Technology Co., No. 5:19-cv-00427-BO, and there is no other litigation or proceeding involving the ’125 patent. Id. at 2. Although Exhibit 1027 references another potential agreement, which has not been entered into, the parties represent “that the documents filed as Exhibits 1027 and 1028 represent all agreements made in connection with, or in contemplation of, the termination of this proceeding.” Id. at 3–4. IPR2020-01096 Patent 7,263,125 B2 3 Under the circumstances, it is appropriate to terminate the proceeding without rendering any further decisions. See 37 C.F.R. § 42.71(a). We have reviewed the Settlement Agreement and Patent Agreement Terms between Petitioner and Patent Owner. Because the Settlement Agreement and Patent Agreement Terms contain business confidential information about the settlement terms, it is appropriate to treat the Settlement Agreement and Patent Agreement as business confidential information under 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision under 35 U.S.C. § 318(a). ORDER It is ORDERED that the joint motion to terminate in IPR2020-01096 is granted; FURTHER ORDERED that the proceeding is terminated; FURTHER ORDERED that the parties’ joint request to treat the true copy of their Settlement Agreement and Patent Agreement Terms as business confidential information and to keep them separate from the file of the involved patent, under 37 C.F.R. § 42.74(c), is granted; and FURTHER ORDERED that Exhibits 1027 and 1028 shall remain business confidential information and shall be kept separate from the file of the involved patent. IPR2020-01096 Patent 7,263,125 B2 4 FOR PETITIONER: Haixia Lin Grant Rowan Jonathan Knight WILMER CUTLER PICKERING HALE AND DORR LLP haixia.lin@wilmerhale.com grant.rowan@wilmerhale.com jonathan.knight@wilmerhale.com FOR PATENT OWNER: Richard Kamprath David Frist John Haynes MCKOOL SMITH, P.C. ALSTON & BIRD LLP rkamprath@mckoolsmith.com david.frist@alston.com john.haynes@alston.com