CELLULAR EVOLUTION LLC

Patent Trials and Appeals Board

Jun 30, 2020

IPR2020-00842 (P.T.A.B. Jun. 30, 2020)

Trials@uspto.gov Paper 8
571-272-7822 Date: June 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ERICSSON INC.,
Petitioner,

v.

CELLULAR EVOLUTION LLC,
Patent Owner.
____________

IPR2020-00841 (Patent 7,505,783 B2)
IPR2020-00842 (Patent 8,285,325 B2)
IPR2020-00843 (Patent 7,110,788 B2)
IPR2020-00844 (Patent 6,741,868 B1)
____________

Before JUSTIN T. ARBES, JESSICA C. KAISER, and SHARON FENICK,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2020-00841 (Patent 7,505,783 B2)
IPR2020-00842 (Patent 8,285,325 B2)
IPR2020-00843 (Patent 7,110,788 B2)
IPR2020-00844 (Patent 6,741,868 B1)

2
On June 24, 2020, the parties filed a Joint Motion to Terminate in
each of the instant proceedings on the basis of a settlement reached by the
parties. See Paper 6 (“Mot.”);1 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72,
42.74. The parties also filed a copy of their written settlement agreement
(Exhibit 2001) as “Parties and Board Only” in the Patent Trial and Appeal
Board End to End (PTAB E2E) system and requested in the Motions that the
agreement be treated as business confidential information under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c). Mot. 1.
Because the parties had not obtained Board authorization before filing
the Motions as required by 37 C.F.R. § 42.20(b), we informed the parties by
email that the Motions would be considered once the parties file a Joint
Notice (1) stating the status of any other proceedings (e.g., district court
cases) involving the challenged patents, and (2) certifying that, other than
the settlement agreement filed as Exhibit 2001, there is no other “agreement
or understanding between the patent owner and a petitioner, including any
collateral agreements referred to in such agreement or understanding, made
in connection with, or in contemplation of, the termination” of the
proceedings under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). The parties
subsequently filed a Joint Notice (Paper 7, “Notice”), and Patent Owner filed
a copy of a collateral agreement (Exhibit 2002) between Patent Owner and a

1 The parties filed similar documents in each of the instant proceedings. See
IPR2020-00841, Papers 6, 7, Exs. 2001, 2002; IPR2020-00842, Papers 6, 7,
Exs. 2001, 2002; IPR2020-00843, Papers 8, 9, Exs. 2001, 2002;
IPR2020-00844, Papers 6, 7, Exs. 2001, 2002. We refer to those filed in
Case IPR2020-00841 for convenience.
IPR2020-00841 (Patent 7,505,783 B2)
IPR2020-00842 (Patent 8,285,325 B2)
IPR2020-00843 (Patent 7,110,788 B2)
IPR2020-00844 (Patent 6,741,868 B1)

3
third party as “Board Only” in the PTAB E2E system. Patent Owner
requests in the Joint Notice that the collateral agreement also be treated as
business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Notice 2. Petitioner indicated to the Board by email that it does
not oppose Patent Owner’s request.
The instant proceedings are still in the preliminary stage, as we have
not yet entered decisions whether or not to institute inter partes review.
The parties represent that two district court cases involving the challenged
patents have been dismissed with prejudice and “[t]here are no other court
proceedings” involving the challenged patents. Id. The parties also certify
that, other than the settlement agreement and collateral agreement, “there is
no other agreement or understanding between Patent Owner and Petitioner,
including any collateral agreements referred to in such agreement or
understanding, made in connection with, or in contemplation of, the
termination of the present inter partes review proceeding[s].” Id. Under
these circumstances, we determine that it is appropriate to terminate the
instant proceedings without rendering any further decisions. See 37 C.F.R.
§ 42.72.
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ request that the settlement agreement
(Exhibit 2001) and Patent Owner’s request that the collateral agreement
(Exhibit 2002) be treated as business confidential information, kept separate
from the files of U.S. Patent Nos. 7,505,783 B2, 8,285,325 B2,
7,110,788 B2, and 6,741,868 B1, and made available only to Federal
IPR2020-00841 (Patent 7,505,783 B2)
IPR2020-00842 (Patent 8,285,325 B2)
IPR2020-00843 (Patent 7,110,788 B2)
IPR2020-00844 (Patent 6,741,868 B1)

4
Government agencies on written request, or to any person on a showing of
good cause, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted;
and
FURTHER ORDERED that the Joint Motion to Terminate in each of
the instant proceedings is granted and the proceedings are terminated.
IPR2020-00841 (Patent 7,505,783 B2)
IPR2020-00842 (Patent 8,285,325 B2)
IPR2020-00843 (Patent 7,110,788 B2)
IPR2020-00844 (Patent 6,741,868 B1)

5
FOR PETITIONER:
J. Andrew Lowes
Clint Wilkins
Samuel Drezdzon
Angela Oliver
HAYNES AND BOONE, LLP
andrew.lowes.ipr@haynesboone.com
clint.wilkins.ipr@haynesboone.com
samuel.drezdzon.ipr@haynesboone.com
angela.oliver.ipr@haynesboone.com

FOR PATENT OWNER:

Michael Farjami
Farshad Farjami
FARJAMI & FARJAMI LLP
mfarjami@farjami.com
ffarjami@farjami.com

Masood Anjom
Kyung Kim
AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING, P.C.
manjom@azalaw.com
dkim@azalaw.com