Cisco Systems, Inc.v.Spherix Incorporated

Patent Trial and Appeal Board

Dec 4, 2015

11355640 (P.T.A.B. Dec. 4, 2015)

Trials@uspto.gov Paper 15
571-272-7822 Entered: December 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.,
Petitioner,

v.

SPHERIX PORTFOLIO ACQUISITION II, INC.,
Patent Owner.

Cases
IPR2015-00999 (Patent 7,397,763 B2)
IPR2015-01001 (Patent 8,607,323 B2)
1

Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION
Joint Motion to Terminate
35 U.S.C. § 317; 37 C.F.R. § 42.74

1
This order addresses issues that are the same in both cases. We exercise
our discretion to issue one order to be filed in each case. The parties,
however, are not authorized to use this style heading in subsequent papers.
IPR2015-00999 (Patent 7,397,763 B2)
IPR2015-01001 (Patent 8,607,323 B2)

2
On December 3, 2015, Cisco Systems, Inc. (“Petitioner”) and Spherix
Portfolio Acquisition II, Inc. (“Patent Owner”) filed a “Joint Motion to
Terminate Proceedings” based on a settlement agreement that resolves the
parties’ disputes related to the challenged patents. Paper 13.
2
The parties
concurrently filed a copy of the settlement agreement between Petitioner and
Patent Owner (Ex. 1013) and a “Joint Request to File Agreement as
Business Confidential Information Pursuant to 35 U.S.C. § 317” (Paper 14).
See 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.”).
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.”
These proceedings are in their early stages. For example, Patent
Owner has not filed a Patent Owner Response. As a result, we have not yet
decided the merits of these proceedings. Under these circumstances, we
determine that it is appropriate to terminate these proceedings as to both
Petitioner and Patent Owner without rendering a final written decision. See
37 C.F.R. §§ 42.72, 42.74.

2
Citations are to the filings in IPR2015-00999, unless otherwise noted.
IPR2015-00999 (Patent 7,397,763 B2)
IPR2015-01001 (Patent 8,607,323 B2)

3
ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate Proceedings is
granted; and
FURTHER ORDERED that the settlement agreements (Exhibit 1013
in IPR2015-0999 and Exhibit 1046 in IPR2015-01001) be treated as
business confidential information and be kept separate from the files of the
involved U.S. Patent Nos. 7,397,763 B2 and 8,607,323 B2.
IPR2015-00999 (Patent 7,397,763 B2)
IPR2015-01001 (Patent 8,607,323 B2)

4
For PETITIONER:

David L. McCombs
Theodore M. Foster
Michael S. Parsons
HAYNES AND BOONE LLP
david.mccombs.ipr@haynesboone.com
ipr.theo.foster@haynesboone.com
ipr.michael.parsons@haynesboone.com

For PATENT OWNER:

Donald McPhail
Carl B. Wischhusen
COZEN O’CONNOR
DMcphail@cozen.com
CWischhusen@cozen.com