Huawei Technologies Co., Ltd.v.Spherix Incorporated

Patent Trial and Appeal Board

Sep 24, 2015

10763015 (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 IPR2015-01390
Patent 7,664,123 B2
____________

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

CHAGNON, Administrative Patent Judge.

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

IPR2015-01390
Patent 7,664,123 B2

2

On September 18, 2015, the parties filed a Joint Motion to Terminate this
proceeding (Paper 9), a copy of the parties’ settlement agreement (Ex. 1008), and a
Motion to Seal the settlement agreement (Paper 8). 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, Cases
IPR2014-00132, IPR2014-00133, 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
(Paper 10), and a true copy of the parties’ settlement agreement (Ex. 1009).
1
The
renewed Joint Motion to Terminate also included 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.
This proceeding is still in its preliminary stages. Patent Owner, Spherix
Incorporated, has not filed 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 also
settled the related district court case involving U.S. Patent No. 7,664,123 B2 (“the
’123 patent”). Paper 10, 3. The parties also indicate that the ’123 patent is not
involved in any other proceedings currently before the Office. Id. Under these

1
The first-filed Joint Motion to Terminate this proceeding (Paper 9) and redacted
settlement agreement (Ex. 1008) will be expunged from the record of this
proceeding.
IPR2015-01390
Patent 7,664,123 B2

3

circumstances, we determine that it is appropriate to terminate this proceeding
without rendering any further decisions. See 37 C.F.R. § 42.72.

Accordingly, it is:
ORDERED that the Motion to Seal Exhibit 1009 is GRANTED, and the
parties’ request that the settlement agreement (Ex. 1009) be treated as business
confidential information, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c), is GRANTED;
FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.7(a), Paper 9 and
Exhibit 1008 are EXPUNGED from the record of the instant proceeding; and
FURTHER ORDERED that the parties’ renewed Joint Motion to Terminate
this proceeding is GRANTED, and this proceeding is hereby terminated.

IPR2015-01390
Patent 7,664,123 B2

4

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

PATENT OWNER:

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