Kyocera Communications, Inc.v.Cellular Communications Equipment LLC

Patent Trial and Appeal Board

Jan 7, 2016

12387661 (P.T.A.B. Jan. 7, 2016)

Trials@uspto.gov Paper No. 13
571-272-7822 Entered: January 7, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

KYOCERA COMMUNICATIONS, INC.,
Petitioner,

v.

CELLULAR COMMUNICATIONS EQUIPMENT LLC,
Patent Owner.
____________

Case IPR2015-01559
Patent 8,385,966 B2
____________

Before JENNIFER S. BISK, GREGG I. ANDERSON,
WILLIAM M. FINK, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION
Joint Motion to Terminate
37 C.F.R. § 42.5(a), 42.71(a)

IPR2015-01559
Patent 8,385,966 B2

2 

On January 6, 2015, the parties filed a “Joint Motion to Terminate
Proceeding Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74” (“Motion,”
“Mot.,” Paper 11) based on a settlement that resolves the parties’ disputes
related to the challenged patent. The parties also reached settlement in
IPR2015-01564 and are concurrently requesting termination of that
proceeding. Mot. 2, 7. The parties concurrently filed a true copy of the
settlement agreement (Ex. 1017) along with a “Joint Stipulation of Dismissal”
(Ex. 1018) in the related litigation, Civil Action No.6:14-cv-982 (E.D. Texas)
(Consolidated Lead Case) (“District Court Litigation”). The parties request
that Exhibits 1017 and 10181 be treated as business confidential information
and be kept separate from the underlying files, as provided in 35 U.S.C. §
317(b) and 37 C.F.R. § 42.74(c) (“A party to a settlement may request that the
settlement be treated as business confidential information and be kept separate
from the files of an involved patent or application.”). Id. at 3.
The parties jointly certify that there is no other agreement or
understanding between them, including any collateral agreements, made in
connection with, or in contemplation of termination of the instant proceeding
as set forth in 35 U.S.C. § 317(b). Id. at 4-5. The parties have identified all
the parties in the District Court Litigation with respect to US Patent 8,385,966
(“’966 patent”). Id. at 5–6. The parties have also identified other inter partes
review proceedings involving the ’966 patent. Id. at 6. The status of all
pending litigation involving the ’966 patent has been provided. Id. at 6.

1 The parties ask that the “settlement agreement documents” be treated as
business confidential information. While the stipulation for dismissal appears
to be a publicly available document, we include it as business confidential
information. Any third party seeking to review it may have access through the
files of the District Court Litigation as identified herein.
IPR2015-01559
Patent 8,385,966 B2

3 

We have not yet entered a decision on institution in the proceeding.
Under these circumstances, we determine that it is appropriate to dismiss the
Petition. See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does not constitute a
final written decision pursuant to 35 U.S.C. § 318(a).
ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate is granted; and
FURTHER ORDERED that that the settlement agreement (Exhibit
1017) and stipulation of dismissal (Exhibit 1018) be treated as business
confidential information, be designated “Parties and Board Only,” and both
will be kept separate from the files of the involved U.S. Patent No. 8,385,966.

IPR2015-01559
Patent 8,385,966 B2

4 

For PETITIONER:

Paul Hunter
Troy Smith
FOLEY & LARDNER LLP
phunter@foley.com
tdsmith@foley.com
For PATENT OWNER:

Barry Bumgardner
Matthew Juren
NELSON BUMGARDNER, P.C.
barry@nelbum.com
matthew@nelbum.com
CCE-IPR@nelbum.com

Amedeo Ferraro
MARTIN & FERRARO, LLP
aferraro@martinferraro.com