T-Mobile USA, Inc. and T-Mobile US, Inc.v.Mobile Telecommunications Technologies, LLC

Patent Trial and Appeal Board

May 29, 2015

08899476 (P.T.A.B. May. 29, 2015)

Trials@uspto.gov Paper 14
571-272-7822 Entered: May 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

T-MOBILE USA, INC., and T-MOBILE US, INC.,
Petitioner,
v.
MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
Patent Owner.

_______________

Case IPR2014-01035 (Patent 5,659,891)
1

Case IPR2014-01036 (Patent 5,915,210)
2

_______________

Before MIRIAM L. QUINN, MEREDITH C. PETRAVICK, and
SCOTT A. DANIELS, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.72

1
This case was joined with IPR2015-00018 on Apr. 8, 2015. Paper 16.
2
This case was joined with IPR2015-00015 on Apr. 8, 2015. Paper 15.
Case IPR2014-01035 (Patent 5,659,891)
Case IPR2014-01036 (Patent 5,915,210)

On May 19, 2015, Petitioner T-Mobile USA, Inc. and T-Mobile
US, Inc. (“T-Mobile”) and Patent Owner filed a joint motion to terminate the
instant proceedings pursuant to a settlement agreement. IPR2014-01035,
Paper 19; IPR2014-01036, Paper 18.
3
The parties also filed, with “Board
only” accessibility, 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 2003.
Additionally, the parties submitted a joint request to have their settlement
agreement treated as confidential business information under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c). Paper 20.
The instant proceeding is in its early trial stage, before the due date for
patent owner’s response. The parties state that Petitioner T-Mobile will not
participate further in the proceedings even if the Board does not grant the
motion to terminate. Paper 19, 3. We determine that termination as to
Petitioner is proper, as we have not decided the merits of the proceeding.
Patent Owner filed separately, as Exhibit 2004, additional and lengthy
arguments as to why it would be appropriate for the panel to terminate the
proceeding as to Patent Owner. Those arguments should have been
presented in the body of the motion, not as an attachment to the motion, as
the arguments form part of the full statement of the reasons for the relief
requested in a motion to terminate. See 37 C.F.R. §42.22(a)(2). Therefore,
the arguments presented in Exhibit 2004 will not be considered.

3
The filings in each of these proceedings are identical, and, therefore, we
refer from here on to the filings in case IPR2014-01035.
Case IPR2014-01035 (Patent 5,659,891)
Case IPR2014-01036 (Patent 5,915,210)

Upon consideration of the arguments presented in the motion, based
on the facts of this case, and the need to conserve Board resources, it is
appropriate to enter judgment.
4
See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
Accordingly, it is:
ORDERED that the joint motions to terminate IPR2014-01035 and
IPR2014-01036 are granted;
FURTHER ORDERED that the instant proceedings are hereby
terminated in their entirety;
FURTHER ORDERED that the parties’ joint requests that the
settlement and agreement be treated as business confidential information
kept separate from the patent file, and made available only as provided by
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted.

4
A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
Case IPR2014-01035 (Patent 5,659,891)
Case IPR2014-01036 (Patent 5,915,210)

PETITIONER:

For T-Mobile USA, Inc. and T-Mobile US, Inc.:
Pierre J. Hubert (Reg. No. 45,826)
Steven J. Pollinger (Reg. No. 35,326)
McKool Smith, P.C.
300 West 6
th
Street, Suite 1700
Austin, TX 78701
phubert@mckoolsmith.com
spollinger@mckoolsmith.com

PATENT OWNER:
John R. Kasha (Reg. No. 53,100)
Kelly Kasha (Reg. No. 47,743)
KASHA LAW LLC
14532 Dufief Mill Rd.
North Potomac, MD 20878
john.kasha@kashalaw.com
Kelly.kasha@kashalaw.com

Craig Jepson (Reg. No. 33,517)
Reed & Scardino LLP
301 Congress Avenue, Suite 1250
Austin, TX 78701
cjepson@reedscardino.com