Cisco Systems, Inc.v.Constellation Technologies LLC

Patent Trial and Appeal Board

Feb 23, 2015

11188989 (P.T.A.B. Feb. 23, 2015)

Trials@uspto.gov Paper 19
571-272-7822 Entered: February 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.,
Petitioner,

v.

RPX CLEARINGHOUSE LLC,
Patent Owner.
____________

Case IPR2014-00911
Patent 8,134,917 B2

Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and
PETER P. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION
Termination of the Proceeding
37 C.F.R. § 42.72
IPR2014-00911
Patent 8,134,917 B2

2
I. DISCUSSION
On February 18, 2015, the parties filed a Joint Motion to terminate
this proceeding (Paper 18), as well as a Joint Request (Paper 17) to have
their written 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. 1016. The
parties indicated in their Joint Motion that termination of this proceeding is
appropriate because they have reached an agreement regarding their dispute
with respect to U.S. Patent No. 8,134,917 B2 (“the ’917 patent”). See Paper
18, 4–7. The parties indicated that the co-pending district court cases
involving the ’917 patent have been dismissed. Id. at 7. The parties did not
identify any other related district court cases involving the ’917 patent.
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, this proceeding is in its early stages.
Paper 18, 5. Although we instituted an inter partes review of claims 1–18 of
the ’917 patent on December 15, 2014 (Paper 8), and have held an initial
conference call, the proceeding is in its early stages and Patent Owner, RPX
Clearinghouse, Inc., has not taken discovery or 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
IPR2014-00911
Patent 8,134,917 B2

3
the parties have filed their written settlement agreement, and the co-pending
district court cases have been dismissed, we determine that it is appropriate
to terminate this proceeding without rendering a Final Written Decision as to
the patentability of claims 1–18 of the ’917 patent. See 37 C.F.R. §§ 42.72,
42.73, 42.74.

II. ORDER
Accordingly, it is:
ORDERED that the parties’ Joint Request that the settlement
agreement (Ex. 1016) be treated as business confidential information under
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 this proceeding
is GRANTED, and this proceeding is hereby terminated.
IPR2014-00911
Patent 8,134,917 B2

4
For PETITIONER:

David McCombs
Theo M. Foster
John Russell Emerson
Haynes and Boone, LLP
david.mccombs.ipr@haynesboone.com
russell.emerson.ipr@haynesboone.com
ipr.theo.foster@haynesboone.com

For PATENT OWNER:

Andrew R. Sommer
Mike Tomasulo
Winston & Strawn LLP
asommer@winston.com
mtomasulo@winston.com