Nokia Technologies Oy

Patent Trials and Appeals BoardApr 27, 2021

IPR2021-00037 (P.T.A.B. Apr. 27, 2021)

Trials@uspto.gov Paper No. 18 571.272.7822 Entered: April 27, 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. ____________ IPR2020-01685, IPR2021-00035, IPR2021-00036 (Patent 6,950,469 B2); IPR2021-00037, IPR2021-00038, IPR2021-00039 (Patent 7,280,599 B2); IPR2021-00040, IPR2021-00041, IPR2021-00042, IPR2021-00043 (Patent 8,036,273 B2)1 ___________ Before BARBARA A. PARVIS, JENNIFER MEYER CHAGNON, and MONICA S. ULLAGADDI, Administrative Patent Judges. CHAGNON, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 1 This Order applies to each of the listed proceedings. The parties are not authorized to use this style heading for any subsequent papers. IPR2020-01685, IPR2021-00035, IPR2021-00036 (Patent 6,950,469 B2); IPR2021-00037, IPR2021-00038, IPR2021-00039 (Patent 7,280,599 B2); IPR2021-00040, IPR2021-00041, IPR2021-00042, IPR2021-00043 (Patent 8,036,273 B2) 2 I. INTRODUCTION With the Board’s authorization, Petitioner and Patent Owner (collectively, “the Parties”) filed a Joint Motion to terminate each of the above-identified proceedings. Paper 182 (“Mot.”). Along with each Joint Motion, the Parties filed a copy of a confidential Settlement Agreement (Ex. 1020) and Patent Agreement Terms (Ex. 1021 (“Term Sheet”)), as well as a Joint Request to Treat the Settlement Agreement as Business Confidential Information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 20 (“Joint Request”)). II. DISUCSSION In the Joint Motion, the Parties represent that they “have executed a settlement agreement that resolves all of their disputes concerning U.S. Patent Nos. 6,950,469, 7,280,599, and 8,036,273.” Mot. 3. The Parties further represent that “a true and correct copy of the Litigation Settlement Agreement has been filed.” Id. at 4; Ex. 1020. The Settlement Agreement references a Term Sheet, which also has been filed. Mot. 4; Ex. 1021. The Parties note that the Settlement Agreement “references another potential agreement, but the parties have not entered into that agreement as of this filing, and there are no other agreements between the parties.” Mot. 4. The Parties, thus, confirm “that the documents filed as Exhibits 1020 [(i.e., the Settlement Agreement)] and 1021 [(i.e., the Term Sheet)] represent all 2 For purposes of expediency, we cite to Papers and Exhibits filed in IPR2020-01685. Corresponding Papers and Exhibits were filed in each of the captioned proceedings, as shown in the Appendix. IPR2020-01685, IPR2021-00035, IPR2021-00036 (Patent 6,950,469 B2); IPR2021-00037, IPR2021-00038, IPR2021-00039 (Patent 7,280,599 B2); IPR2021-00040, IPR2021-00041, IPR2021-00042, IPR2021-00043 (Patent 8,036,273 B2) 3 agreements made in connection with, or in contemplation of, the termination of this proceeding. All such agreements have been filed with the Board as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).” Id. This proceeding is still in its preliminary stages. We have not entered a decision on whether to institute inter partes review in these proceedings. In view of the early stage of these proceedings and the settlement between the parties, we determine that good cause exists to terminate these proceedings with respect to the parties. We also have reviewed the Settlement Agreement and Term Sheet, and we determine that the Settlement Agreement and Term Sheet contain business confidential information regarding the terms of the settlement, and that good cause exists to treat the Settlement Agreement and Term Sheet as business confidential information under 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). According, it is ORDERED that the parties’ Joint Request to treat the Settlement Agreement and Term Sheet as business confidential information under 37 C.F.R. § 42.74(c) is granted in each of the captioned proceedings, and the Settlement Agreement and Term Sheet shall be kept separate from the files of respective U.S. Patent Nos. 6,950,469 B2, 7,280,599B2, and 8,036,273 B2, 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); and IPR2020-01685, IPR2021-00035, IPR2021-00036 (Patent 6,950,469 B2); IPR2021-00037, IPR2021-00038, IPR2021-00039 (Patent 7,280,599 B2); IPR2021-00040, IPR2021-00041, IPR2021-00042, IPR2021-00043 (Patent 8,036,273 B2) 4 FURTHER ORDERED that the parties’ Joint Motion to Terminate is granted in each of the captioned proceedings; the Petition in each of IPR2020-01685, IPR2021-00035, IPR2021-00036, IPR2021-00037, IPR2021-00038, IPR2021-00039, IPR2021-00040, IPR2021-00041, IPR2021-00042, and IPR2021-00043 is dismissed; and the captioned proceedings are terminated. IPR2020-01685, IPR2021-00035, IPR2021-00036 (Patent 6,950,469 B2); IPR2021-00037, IPR2021-00038, IPR2021-00039 (Patent 7,280,599 B2); IPR2021-00040, IPR2021-00041, IPR2021-00042, IPR2021-00043 (Patent 8,036,273 B2) 5 APPENDIX Proceeding Joint Motion Joint Request Settlement Agreement Term Sheet IPR2020-01685 Paper 18 Paper 20 Ex. 1020 Ex. 1021 IPR2021-00035 Paper 16 Paper 17 Ex. 1120 Ex. 1121 IPR2021-00036 Paper 15 Paper 17 Ex. 1220 Ex. 1221 IPR2021-00037 Paper 15 Paper 16 Ex. 1018 Ex. 1019 IPR2021-00038 Paper 15 Paper 16 Ex. 1119 Ex. 1120 IPR2021-00039 Paper 15 Paper 16 Ex. 1218 Ex. 1219 IPR2021-00040 Paper 15 Paper 16 Ex. 1018 Ex. 1019 IPR2021-00041 Paper 15 Paper 16 Ex. 1118 Ex. 1119 IPR2021-00042 Paper 17 Paper 18 Ex. 1218 Ex. 1219 IPR2021-00043 Paper 15 Paper 16 Ex. 1319 Ex. 1320 IPR2020-01685, IPR2021-00035, IPR2021-00036 (Patent 6,950,469 B2); IPR2021-00037, IPR2021-00038, IPR2021-00039 (Patent 7,280,599 B2); IPR2021-00040, IPR2021-00041, IPR2021-00042, IPR2021-00043 (Patent 8,036,273 B2) 6 PETITIONER: Grant Rowan Joseph Haag Haixia Lin Jonathan Knight WILMER CUTLER PICKERING HALE AND DORR LLP grant.rowan@wilmerhale.com joseph.haag@wilmerhale.com haixia.lin@wilmerhale.com jonathan.knight@wilmerhale.com PATENT OWNER: David Frist John Haynes Nicholas Tsui ALSTON & BIRD LLP david.frist@alston.com john.haynes@alston.com nick.tsui@alston.com Richard Kamprath Theodore Stevenson, III MCKOOL SMITH, P.C. rkamprath@mckoolsmith.com tstevenson@mckoolsmith.com