Cisco Systems, Inc.v.RPX Clearinghouse LLC

Patent Trial and Appeal Board

Feb 23, 2015

09867175 (P.T.A.B. Feb. 23, 2015)

Trials@uspto.gov Paper 17
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 IPR2014-01180
Patent 7,154,879 B1

Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and
PATRICK SCANLON, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Termination of the Proceeding
37 C.F.R. § 42.72
IPR2014-01180
Patent 7,154,879 B1

2
I. DISCUSSION
On February 18, 2015, the parties filed a Joint Motion to terminate
this proceeding (Paper 16), as well as a Joint Request (Paper 15) 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. 1021. 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. 7,154,879 B1 B2 (“the ’879 patent”). See Paper 16, 4–7.
The parties indicated that the co-pending district court cases involving the
’879 patent have been dismissed. Id. at 7. The parties did not identify any
other related district court cases involving the ’879 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 16, 5. Although we instituted an inter partes review of claims 1–16 of
the ’879 patent on February 4, 2015 (Paper 8), we have not held an initial
conference call and Patent Owner, RPX Clearinghouse, Inc., 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
IPR2014-01180
Patent 7,154,879 B1

3
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 1–16 of the ’879 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. 1021) 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.
IPR2014-01180
Patent 7,154,879 B1

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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