HTC Corporationv.Wireless Mobile Devices LLC

Patent Trials and Appeals Board

Aug 1, 2014

09523168 - (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