Blackberry Corporation and Blackberry Limitedv.Wi-Lan USA Inc.

Patent Trial and Appeal Board

Nov 5, 2013

09088950 (P.T.A.B. Nov. 5, 2013)

Trials@uspto.gov Paper 31
571-272-7822 Entered: November 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BLACKBERRY CORPORATION AND
BLACKBERRY LIMITED
Petitioner,

v.

WI-LAN USA INC.
Patent Owner.
____________

Case IPR2013-00126
Patent 6,240,088
____________

Before JAMESON LEE, GLENN J. PERRY, and DAVID C. McKONE,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

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

Case IPR2013-00126
Patent 6,240,088

2
On October 23, 2013, the parties filed a joint motion to terminate this inter
partes review. Paper 29. With the joint motion, as Exhibit 1, the parties filed a
copy of their written settlement agreement covering Patent 6,240,088 involved in
this proceeding. Also on October 23, 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 28.
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),
any 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”) has 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 was instituted on June 20, 2013. Paper 10.
WI-LAN USA filed a Patent Owner Response on August 26, 2013. Paper 16.
Blackberry has not filed a reply. 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 IPR2013-00126
Patent 6,240,088

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In the joint motion, the parties represent that related consolidated district
court litigations, Wi-LAN USA, Inc. et al. v. Research In Motion Ltd., et al., Case
No. 12-cv-24349 (S.D. Fla.) and Wi-LAN USA, Inc. et al. v. Research In
Motion Ltd., et al., Case No. 12-cv-20232 (S.D. Fla.), both involving Patent
6,240,088, were 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 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 IPR2013-00126 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 also granted.

Case IPR2013-00126
Patent 6,240,088

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For PETITIONER:

Robert C. Mattson, Esq.
W. Todd Baker, Esq.
Johnny Ma, Esq.
Oblon, Spivak, McClelland, Maier & Neustadt, LLP
cpdocketmattson@oblon.com
CPDocketBaker@oblon.com

For PATENT OWNER

Anthony S. Volpe, Esq.
Ryan W. O’Donnell, Esq.
Robert D. Leonard, Esq.
Volpe & Koenig, P.C.
avolpe@vklaw.com
rodennell@vklaw.com
rleonard@vklaw.com