Cisco Systems, Inc.v.RPX Clearinghouse LLC

Patent Trial and Appeal Board

Feb 25, 2015

08921028 (P.T.A.B. Feb. 25, 2015)

Trials@uspto.gov Paper 20
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.

RPX CLEARINGHOUSE LLC,
Patent Owner.
____________

Case IPR2014-01192
Patent 6,069,895
____________

Before RAMA G. ELLURU, LYNNE E. PETTIGREW, and J. JOHN LEE,
Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

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

I. DISCUSSION
On February 20, 2015, the parties filed a Joint Motion to Terminate
Proceedings (“Joint Motion”) requesting termination of this proceeding
(Paper 17), as well as a Joint Request (Paper 18) to have their settlement
IPR2014-01192
Patent 6,069,895
2
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
settlement agreement. Ex. 1021. The parties indicate 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.
6,069,895 (“the ’895 patent”). See Paper 17, 4–7. The parties indicate that
all co-pending district court litigation involving the ’895 patent has 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, this proceeding is in its early stages.
Paper 17, 6. We instituted an inter partes review of claim 17 of the ’895
patent on February 2, 2015 (Paper 10), but 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
district court litigation has been dismissed, we determine it is appropriate to
terminate this proceeding without rendering a Final Written Decision as to
the patentability of claim 17 of the ’895 patent. See 37 C.F.R. §§ 42.72,
42.73, 42.74.
IPR2014-01192
Patent 6,069,895
3
II. ORDER
Accordingly, it is:
ORDERED that the parties’ Joint Motion to terminate this proceeding
is granted;
FURTHER ORDERED that the parties’ Joint Request that the
settlement agreement (Ex. 1021) be treated as business confidential
information, to be kept separate from the patent file, is granted; and
FURTHER ORDERED that this proceeding is terminated.

FOR PETITIONER:
Barton E. Showalter
Douglas M. Kubehl
Chad C. Walters
Baker Botts L.L.P.
bart.showalter@bakerbotts.com
doug.kubehl@bakerbotts.com
chad.walters @bakerbotts.com

FOR PATENT OWNER:
Andrew R. Sommer
Mike Tomasulo
Winston & Strawn LLP
asommer@winston.com
mtomasulo@winston.com