Cisco Systems, Inc.v.Constellation Technologies LLCDownload PDFPatent Trial and Appeal BoardFeb 23, 201511188989 (P.T.A.B. Feb. 23, 2015) Copy Citation Trials@uspto.gov Paper 19 571-272-7822 Entered: February 23, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CISCO SYSTEMS, INC., Petitioner, v. RPX CLEARINGHOUSE LLC, Patent Owner. ____________ Case IPR2014-00911 Patent 8,134,917 B2 Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and PETER P. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION Termination of the Proceeding 37 C.F.R. § 42.72 IPR2014-00911 Patent 8,134,917 B2 2 I. DISCUSSION On February 18, 2015, the parties filed a Joint Motion to terminate this proceeding (Paper 18), as well as a Joint Request (Paper 17) to have their written settlement agreement treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties also filed a true copy of their written settlement agreement. Ex. 1016. The parties indicated in their Joint Motion that termination of this proceeding is appropriate because they have reached an agreement regarding their dispute with respect to U.S. Patent No. 8,134,917 B2 (“the ’917 patent”). See Paper 18, 4–7. The parties indicated that the co-pending district court cases involving the ’917 patent have been dismissed. Id. at 7. The parties did not identify any other related district court cases involving the ’917 patent. 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.” As the parties indicate in their Joint Motion, this proceeding is in its early stages. Paper 18, 5. Although we instituted an inter partes review of claims 1–18 of the ’917 patent on December 15, 2014 (Paper 8), and have held an initial conference call, the proceeding is in its early stages and Patent Owner, RPX Clearinghouse, Inc., has not taken discovery or filed a Patent Owner Response. Further, under 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.” As IPR2014-00911 Patent 8,134,917 B2 3 the parties have filed their written settlement agreement, and the co-pending district court cases have been dismissed, we determine that it is appropriate to terminate this proceeding without rendering a Final Written Decision as to the patentability of claims 1–18 of the ’917 patent. See 37 C.F.R. §§ 42.72, 42.73, 42.74. II. ORDER Accordingly, it is: ORDERED that the parties’ Joint Request that the settlement agreement (Ex. 1016) be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and ORDERED that the parties’ Joint Motion to terminate this proceeding is GRANTED, and this proceeding is hereby terminated. IPR2014-00911 Patent 8,134,917 B2 4 For PETITIONER: David McCombs Theo M. Foster John Russell Emerson Haynes and Boone, LLP david.mccombs.ipr@haynesboone.com russell.emerson.ipr@haynesboone.com ipr.theo.foster@haynesboone.com For PATENT OWNER: Andrew R. Sommer Mike Tomasulo Winston & Strawn LLP asommer@winston.com mtomasulo@winston.com Copy with citationCopy as parenthetical citation