Avocent Huntsville Corp.v.Cyber Switching Patents LLC

Patent Trial and Appeal Board

Dec 7, 2015

11437959 (P.T.A.B. Dec. 7, 2015)

Trials@uspto.gov
571-272-7822
Paper No. 9
Date Entered: December 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AVOCENT HUNTSVILLE CORPORATION and
LIEBERT CORPORATION,
Petitioner,

v.

CYBER SWITCHING PATENTS, LLC,
Patent Owner.
____________

Case IPR2015-01438
Patent 7,672,104 B2
____________

Before MICHAEL R. ZECHER, GLENN J. PERRY, and NEIL T. POWELL,
Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

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

IPR2015-01438
Patent 7,672,104 B2

2

I. DISCUSSION
On November 24, 2015, the parties filed a Joint Motion to Terminate this
proceeding (Paper 7), a true copy of the parties’ settlement agreement (Ex. 9999),
and a 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 8).
This proceeding is still in its preliminary stages. Petitioner, Avocent
Huntsville Corporation and Liebert Corporation (“Avocent”), filed a Petition
requesting an inter partes review of claims 1–3 and 8–12 of U.S. Patent No.
7,672,104 B2 (“the ’104 patent,” Ex. 1001). Paper 1. Although Patent Owner,
Cyber Switching Patents, LLC (“Cyber”), timely filed a Preliminary Response
(Paper 6), we have not entered a decision whether or not to institute an inter partes
review.
In the Joint Motion to Terminate this proceeding, the parties represent that
they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties
further represent that there are numerous related matters in the United States
District Court for the Northern District of California that have been dismissed with
prejudice or stayed pending final determination of two related inter partes reviews
involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the
joint requests filed by the parties in the two proceedings involving the ’870 patent,
those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching
Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015)
(Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104
patent is involved in any other proceedings before the Office. See generally id. at
2–4. Under these circumstances, we determine that it is appropriate to terminate
this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.

IPR2015-01438
Patent 7,672,104 B2

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II. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ request to treat the settlement agreement
(Ex. 9999) as business confidential information under 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c) is GRANTED; and
FURTHER ORDERED that the Joint Motion to Terminate this proceeding is
GRANTED, and this proceeding is hereby terminated.

IPR2015-01438
Patent 7,672,104 B2

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For PETITIONER:
Donald L. Jackson
Wayne M. Helge
Davidson, Berquist, Jackson & Gowdey, L.L.P.
djackson@dbjg.com
whelge@dbjg.com

For PATENT OWNER:

Jing Hon Cherng
Mount, Spelman & Fingerman, P.C.
gcherng@mount.com