ASUSTeK Computer Inc. and ASUS Computer International v. Nokia Technologies Oy
USPTO Director (Director Review)
Holding
The Director concluded the sua sponte review of the institution notice (Paper 24) without reaching the merits. The review had been opened to consider whether Petitioners violated their Sotera stipulation. The parties then reported a Patent License Agreement and asked to file a joint motion to terminate, and the Director concluded review on the basis of that settlement and lifted the stay.
Why It Matters
The Director decided nothing on whether the Sotera stipulation was violated, so the order gives no guidance on that question. Settlement during a sua sponte Director Review ends the review, and the parties can then move to terminate the IPR.
Full Summary
Key Points
- Decision under review: the Notice granting institution of inter partes review (Paper 24) in IPR2025-01153, which the Director reviewed sua sponte.
- On May 27, 2026, the Director issued an Order (Paper 27) initiating sua sponte review and authorizing briefing on whether Petitioners ASUSTeK Computer Inc. and ASUS Computer International violated their Sotera stipulation.
- After that Order, the parties emailed the Office that they had entered into a Patent License Agreement and asked for authorization to file a joint motion to terminate the IPR (Ex. 3104).
- The Director made no finding on the alleged Sotera violation. Citing the settlement and the request to move to terminate, the Director ordered the sua sponte Director Review concluded and the stay of the proceeding lifted.
- The decision's footnote describes a Sotera stipulation as one in which a petitioner represents that it will not raise in district court any ground it raised or reasonably could have raised in the IPR.
- KEY QUOTE: "In view of the parties’ settlement and request for authorization to file a joint motion to terminate the proceeding, it is:" (Paper 30, p. 2)
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