Avocent Huntsville Corp.v.Cyber Switching, Inc.

Patent Trial and Appeal Board

Dec 7, 2015

10625837 (P.T.A.B. Dec. 7, 2015)

Trials@uspto.gov Paper No. 33
571-272-7822 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 IPR2015-00690 (Patent 7,550,870 B2)
Case IPR2015-00725 (Patent 7,550,870 B2)

____________

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

PERRY, Administrative Patent Judge.

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

The parties have requested termination of the two inter partes reviews
captioned above. The parties’ requests are granted.
Cases IPR2015-00690 and IPR2015-00725 were petitioned originally
by Avocent Huntsville Corporation (“Avocent”), Liebert Corporation
IPR2015-00690 (Patent 7,550,870 B2)
IPR2015-00725 (Patent 7,550,870 B2)

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(“Liebert”), Eaton Corporation, and Raritan Americas, Inc. d/b/a Raritan
Computer, Inc. The only remaining Petitioner parties are Avocent and
Liebert.1 A final decision has not yet been reached in either proceeding.
The parties have filed Joint Motions2 to terminate each of the
captioned proceedings and have requested3 to have their respective
settlement agreements treated as business confidential information under
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties refer to true copies
of their respective written settlement agreements, which have been filed
separately as exhibits4 in the respective proceedings. The settlement
agreements were filed so as to limit viewing to the parties and the Board
only.
The Joint Motions indicate that the parties have settled their disputes
related to the U.S. Patent No. 7,550,870 B2 (“the ’870 patent”), and that the
related matters in the Northern District of California, which were identified
previously in the respective inter partes reviews, have been dismissed with
prejudice or stayed pending final determination of the applicable inter partes
reviews.
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.”
Although we instituted an inter partes review of claims 1–9, 11, and 12 of

1 IPR2015-00690, Paper 15; and IPR2015-00725, Paper 15.
2 IPR2015-00690, Paper 31; and IPR2015-00725, Paper 31.
3 IPR2015-00690, Paper 32; and IPR2015-00725, Paper 32.
4 IPR2015-00690, Exhibit 9999; and IPR2015-00725, Exhibit 9999.
IPR2015-00690 (Patent 7,550,870 B2)
IPR2015-00725 (Patent 7,550,870 B2)

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the ’870 patent in both proceedings,5 we have not yet reached final decisions
on the merits.
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
the parties have filed their written settlement agreement, and the co-pending
district court cases have been or will be dismissed, we determine that it is
appropriate to terminate these proceedings without rendering Final Written
Decisions as to the patentability of claims 1–9, 11, and 12 of the ’870 patent.
See 37 C.F.R. §§ 42.72, 42.73, 42.74.

5 IPR2015-00690, Paper 16; and IPR2015-00725, Paper 16.
IPR2015-00690 (Patent 7,550,870 B2)
IPR2015-00725 (Patent 7,550,870 B2)

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ORDER
Accordingly, it is:
ORDERED that the parties’ Joint Requests that the settlement
agreements be treated as business confidential information under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) are GRANTED; and
ORDERED that the parties’ Joint Motions to terminate these
proceedings are GRANTED, and these proceedings are hereby terminated.

For PETITIONER:

Donald L. Jackson
Wayne M. Helge
Davidson Berquist Jackson & Gowdey, LLP
djackson@dbjg.com
whelge@dbjg.com

For PATENT OWNER:

Jing Hong Cherng
Mount, Spelman & Fingerman, P.C.
gcherng@mount.com
Daniel S. Mount (pro hac vice)
Kathryn G. Spelman (pro hac vice)
William H. Stewart (pro hac vice)