Cisco Systems, Incv.Bockstar Technologies LLC

Patent Trial and Appeal Board

Feb 25, 2015

08997778 (P.T.A.B. Feb. 25, 2015)

Trials@uspto.gov Paper 18
571-272-7822 Entered: February 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.,
Petitioner,

v.

BOCKSTAR TECHNOLOGIES LLC,
Patent Owner.
____________

Case IPR2014-01194
Patent 6,233,245 B1
____________

Before MICHAEL R. ZECHER, GLENN J. PERRY, and
JAMES A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

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

IPR2014-01194
Patent 6,233,245 B1

2
I. DISCUSSION
On February 20, 2015, the parties filed a Joint Motion to Terminate
Proceedings (Paper 15), as well as a Joint Request (Paper 16) to have their
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. 1014. The parties indicated in
their Joint Motion to Terminate that termination of this proceeding is
appropriate because they have reached an agreement regarding their dispute
with respect to U.S. Patent No. 6,233,245 B1 (“the ’245 patent”). See Paper
15, 4–7. The parties indicated that the co-pending district court cases
involving the ’245 patent have been dismissed. Id. at 7.
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 to Terminate, this proceeding is in its
early stages. Paper 15, 4. Although we instituted an inter partes review of
claims 1–16 of the ’245 patent on January 26, 2015 (Paper 8), Patent Owner
has not 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
the parties have filed their written settlement agreement, and the co-pending
district court cases have been dismissed, we determine that it is appropriate
IPR2014-01194
Patent 6,233,245 B1

3
to terminate this proceeding without rendering a Final Written Decision as to
the patentability of claims 1–16 of the ’245 patent. See 37 C.F.R. §§ 42.72,
42.73, 42.74.
II. ORDER
Accordingly, it is:
ORDERED that the parties’ Joint Request to File Agreement as
Business Confidential Information Pursuant to 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 Proceedings is
GRANTED, and this proceeding is hereby terminated.

IPR2014-01194
Patent 6,233,245 B1

4
PETITIONER
Barton E. Showalter
Chad C. Walters
Douglas M. Kubehl
BAKER BOTTS L.L.P.
bart.showalter@bakerbotts.com
chad.walters@bakerbotts.com
doug.kubehl@bakerbotts.com

PATENT OWNERS

Andrew R. Sommer
Mike Tomasulo
WINSTON & STRAWN LLP
asommer@winston.com
mtomasulo@winston.com