IPR2021-00229 (P.T.A.B. Oct. 20, 2021)

WSOU Investments, LLC d/b/a Brazos Licensing and Development

Patent Trials and Appeals BoardOct 20, 2021

IPR2021-00229 (P.T.A.B. Oct. 20, 2021)

Trials@uspto.gov 571-272-7822 Paper No. 17 Date Entered: October 20, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ HUAWEI TECHNOLOGIES CO., LTD., Petitioner, v. WSOU INVESTMENTS, LLC d/b/a BRAZOS LICENSING AND DEVELOPMENT, Patent Owner ____________ IPR2021-00222; -00223; -00224; -00225; -00226; -00228; -00229; Patents: 6,882,627 B2; 7,095,713 B2; 7,508,755 B2; 7,515,546 B2; 8,200,224 B2; 8,249,446 B2; 8,429,480 B21 ____________ THU A. DANG, BRIAN J. McNAMARA, JOHN D. HAMANN, Administrative Patent Judges McNAMARA, Administrative Patent Judge TERMINATION Due to Settlement After Institution of Trial Granting Requests to Keep Settlement Agreement Confidential 35 U.S.C. § 317; 37 C.F.R. § 42.74 1 This order is to be filed in each case. The parties are not authorized to use this style heading in any subsequent papers. IPR2021-00222; -00223; -00224; -00225; -00226; -00227; -00228; -00229 Patents: 6,882,627 B2; 7,095,713 B2; 7,508,755 B2; 7,515,546 B2; 8,200,224 B2; 9,084,199 B2; 8,249,446 B2; 8,429,480 B2; 2 On September 21, 2021, Huawei Technologies Co., Ltd. (“Petitioner”) and WSOU Investments, LLC d/b/a Brazos Licensing and Development (“Patent Owner”) (collectively “the parties”) filed a Joint Notice of Settlement and Motion to Stay All Deadlines (“Motion to Stay”) in the underlying litigations listed in Table 1 below. On October 12, 2021, during a status conference call concerning the Inter Partes reviews related to the underlying litigations (“the corresponding IPRs”), the parties reported that they had circulated for execution a settlement agreement and, pursuant to that settlement, they would seek to terminate the corresponding IPRs. A Decision to Institute has been entered in each of the IPRs in Table 1. TABLE 1 Civil Action No. (All cases pending in the W.D. Tex.) Patent Number Corresponding Inter Partes Review No. IPR Status 6:20-cv-00533- ADA 6,882,627 B2 IPR2021-00222 Instituted 6:20-cv-00534- ADA 7,095,713 B2 IPR2021-00223 Instituted 6:20-cv-00535- ADA 7,508,755 B2 IPR2021-00224 Instituted 6:20-cv-00536- ADA 7,515,546 B2 IPR2020-00225 Instituted 6:20-cv-00539- ADA 8,200,224 B2 IPR2021-00226 Instituted 6:20-cv-00542- ADA 8,249,446 B2 IPR2021-00228 Instituted 6:20-cv-00544- ADA 8,429,480 B2 IPR2021-00229 Instituted IPR2021-00222; -00223; -00224; -00225; -00226; -00227; -00228; -00229 Patents: 6,882,627 B2; 7,095,713 B2; 7,508,755 B2; 7,515,546 B2; 8,200,224 B2; 9,084,199 B2; 8,249,446 B2; 8,429,480 B2; 3 On October 13, 2021, we authorized the parties to file a Joint Motion to terminate each of the corresponding proceedings. 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(a)–(b). We required that each Joint Motion to Terminate updates the Board concerning the status of any litigation or proceeding, including but not limited to proceedings in the U.S. Patent and Trademark Office involving the subject patents, and advise the Board whether any litigation or proceeding involving the subject patents is contemplated in the foreseeable future. We also required that the Joint Motions to Terminate include a copy of any agreement and include a statement certifying that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the proceeding. We also authorized the parties to file a request that the written agreement be treated as business confidential information and be kept separate from the files of the involved patents. 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). On October 18, 2021, in each of the corresponding IPRs, the parties filed the authorized Joint Motion to Terminate along with a copy of the settlement agreement and a request to maintain the settlement agreement as business confidential information. The parties have also represented that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the proceedings. Notwithstanding that the proceedings have moved beyond the preliminary stage, the parties have explained adequately the reason termination is appropriate. Moreover, after reviewing the settlement agreement, we find that the settlement agreement contains confidential business information regarding the terms of settlement. We determine that IPR2021-00222; -00223; -00224; -00225; -00226; -00227; -00228; -00229 Patents: 6,882,627 B2; 7,095,713 B2; 7,508,755 B2; 7,515,546 B2; 8,200,224 B2; 9,084,199 B2; 8,249,446 B2; 8,429,480 B2; 4 good cause exists to treat the settlement agreement between the parties as business confidential information under 37 C.F.R. § 42.74(c). In consideration of the above, it is ORDERED that, for each of the corresponding IPRs, the Joint Motion to Terminate the proceeding is GRANTED and the proceeding is hereby terminated; and FURTHER ORDERED that, for each of the corresponding IPRs, the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the files of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED. IPR2021-00222; -00223; -00224; -00225; -00226; -00227; -00228; -00229 Patents: 6,882,627 B2; 7,095,713 B2; 7,508,755 B2; 7,515,546 B2; 8,200,224 B2; 9,084,199 B2; 8,249,446 B2; 8,429,480 B2; 5 For PETITIONER: Michael Hawkins Kenneth Hoover Kenneth Darby Kim Leung Stuart Nelson Craig Deutsch Sangki Park Terry Stalford Nicholas Stephens FISH & RICHARDSON P.C. hawkins@fr.com hoover@fr.com kdarby@fr.com leung@fr.com snelson@fr.com deutsch@fr.com spark@fr.com stalford@fr.com nstephens@fr.com For PATENT OWNER: Ryan Loveless Jeffrey Stephens Brett Mangrum James Etheridge Brian Koide Jeffrey Huang ETHERIDGE LAW GROUP ryan@etheridgelaw.com jstephens@etheridgelaw.com brett@etheridgelaw.com ipteam@etheridgelaw.com brian@etheridgelaw.com jeff@etheridgelaw.com