Blackberry Limited and bBLACKBERRY Corporationv.Wi-Lan USA Inc.

Patent Trial and Appeal Board

Nov 4, 2013

09159523 (P.T.A.B. Nov. 4, 2013)

Trials@uspto.gov Paper 10
571-272-7822 Entered: November 4, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BLACKBERRY LIMITED AND
BLACKBERRY CORPORATION
Petitioner,

v.

WI-LAN USA INC.
Patent Owner.
____________

Case IPR2013-00455
Patent 6,260,168
____________

Before JAMESON LEE, RICHARD E. RICE, and MATTHEW R. CLEMENTS,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.73

Case IPR2013-00455
Patent 6,260,168

2
On October 25, 2013, the parties filed a joint motion to terminate this inter
partes review. Paper 9. The parties also filed, as Exhibit 1 to the joint motion, a
copy of their written settlement agreement covering Patent 6,260,168 involved in
this proceeding. Also on October 25, 2013, the parties filed 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 8.
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
chapter shall be terminated with respect to any petitioner upon the joint request of
the petitioner and patent owner, unless the Office has decided the merits of the
proceeding before the request for termination is filed.” Per 37 C.F.R. § 42.74(b),
“[a]ny agreement or understanding between the parties made in connection with, or
in contemplation of, the termination of a proceeding shall be in writing and a true
copy shall be filed with the Board before termination of the trial.” The
requirements for termination with respect to the petitioner (“Blackberry”) have
been met.
Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes
review, the Office may terminate the review or proceed to a final written decision
under section 318(a).” Blackberry is the sole petitioner. The Board has discretion
to terminate this review with respect to the patent owner (“WI-LAN USA”).
This inter partes review has not yet been instituted. Blackberry’s petition
was filed on July 19, 2013. Paper 2. The due date for WI-LAN USA to file a
preliminary response was October 25, 2013, and WI-LAN USA has not yet filed a
preliminary response. Also, in the joint motion to terminate, Blackberry represents
that it will no longer participate, even if the Board does not terminate this review.
Case IPR2013-00455
Patent 6,260,168

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That means if trial is instituted, and if the full response of WI-LAN USA relies on
any expert testimony, there will be no cross-examination of the expert or experts.
In the joint motion, the parties represent that related consolidated district
court litigation, Wi-LAN USA, Inc. v. Research In Motion Ltd., et al., Case No. 12-
cv-24349 (S.D. Fla.) and Wi-LAN Inc., et al. v. Research in Motion Ltd., et al.,
Case No. 1:12-cv-20232 (S.D. Fla.), involving Patent 6,260,168, was dismissed on
October 11, 2013, pursuant to the parties’ joint motion to dismiss.
The Board determines that in the circumstances of this case, it is appropriate
to terminate review both as to petitioner Blackberry and to patent owner
WI-LAN USA, without rendering a final written decision. See 35 U.S.C. § 317(a);
37 C.F.R. § 42.72.
It is
ORDERED that the joint motion to terminate IPR2013-00455 is granted,
and that this inter partes review is hereby terminated as to all parties, including
petitioner Blackberry and patent owner WI-LAN USA; and
FURTHER ORDERED that the parties’ joint request to have their settlement
agreement treated as business confidential information under the 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) is granted.

Case IPR2013-00455
Patent 6,260,168

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PETITIONER:

Paul Devinsky
G. Matthew McCloskey
pdevinsky@mwe.com
mmccloskey@mwe.com

PATENT OWNER:

Anthony Volpe
Robert Leonard
avolpe@vklaw.com
rleonard@vklaw.com