CISCO SYSTEMSv.Constellation Technologies LLC

Patent Trials and Appeals Board

Feb 26, 2015

08867624 - (D) (P.T.A.B. Feb. 26, 2015)

Trials@uspto.gov Paper 17
571-272-7822 Date: February 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS INC.,
Petitioner,

v.

RPX CLEARINGHOUSE LLC1,
Patent Owner.

Case IPR2014-01220
Patent 6,128,649

Before JAMESON LEE, JEREMY M. PLENZLER, and KEVIN W. CHERRY,
Administrative Patent Judges.

CHERRY, Administrative Patent Judge.
ORDER
Termination of Proceedings
37 C.F.R. § 42.72

1 On February 6, 2015, RPX Clearinghouse LLC filed an updated mandatory
disclosure in this proceeding notifying the Board that the patent at issue in this
proceeding had been transferred to it on January 28, 2015. Paper 8, 2. We have
updated the caption in this proceeding to reflect that transfer.
IPR2014-01220
Patent 6,128,649

2

On February 17, 2015, a joint motion to terminate this inter partes review
was filed by Petitioner, Cisco Systems, Inc., and Patent Owner, RPX
Clearinghouse LLC. Paper 14. Also, on February 17, 2015, Petitioner and Patent
Owner filed a copy of their written settlement agreement covering Patent
6,128,649 involved in this inter partes review (Ex. 1017). Petitioner and Patent
Owner also filed a joint request to have their settlement agreement treated as
confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Paper 15. We authorized the filing of these papers.
Petitioner and Patent Owner represent that the settlement agreement filed as
Exhibit 1017 is a copy of their settlement agreement, and is the only settlement
agreement between the parties. Paper 14, 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 the patent owner, unless the Office has decided the merits of the
proceeding before the request for termination is filed.” The requirement for
terminating review with respect to Petitioner is met.
Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes
review, the Office may terminate the review or proceed to a final written decision
under section 318(a).” Cisco Systems, Inc. is the sole petitioner in this review.
The Board has discretion to terminate this review with respect to Patent Owner.
Petitioner and Patent Owner indicate that the related lawsuits between
Petitioner and Patent Owner involving Patent 6,128,649 have been dismissed
already. Paper 14, 6–7.
Patent Owner has not yet filed a Patent Owner Response in this proceeding.
The Board determines that, in these circumstances, it is appropriate to terminate
IPR2014-01220
Patent 6,128,649

3

review both as to Petitioner and Patent Owner without rendering a final written
decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
Both parties request that the Settlement Agreement be kept separate and
treated as business confidential information under 37 C.F.R. § 42.74(b). Paper 15,
2. The Joint Request to File the Agreement as Business Confidential Information
was filed along with the Settlement Agreement, and both were filed before
termination of the proceeding. Id. Accordingly, the Joint Request is granted.
Pursuant to 37 C.F.R. § 42.74(c), the Settlement Agreement “shall only be
available (1) [t]o a Government agency on written request to the Board; or (2) [t]o
any other person upon written request to the Board to make the settlement
agreement available, along with the fee specified in [37 C.F.R. §42.15(d)] and on a
showing of good cause.” We also will change the status designation in the Patent
Review Processing System (PRPS) for the Settlement Agreement (Ex. 1017) from
“Parties and Board Only” to “Board Only.”
Accordingly, it is
ORDERED that the parties’ joint request that the settlement agreement (Ex.
1017) be treated as business confidential information, to be kept separate from the
file of U.S. Patent No. 6,128,649 is granted;
FURTHER ORDERED that the Settlement Agreement (Ex. 1017) shall be
made available only pursuant to the provisions of 37 C.F.R. § 42.74(c);
FURTHER ORDERED that the status of the Settlement Agreement
(Ex. 1017) shall be changed in Patent Review Processing System (PRPS) from
“Parties and Board Only” to “Board Only;”
FURTHER ORDERED that the joint motion to terminate the proceeding is
granted; and
FURTHER ORDERED that the proceeding is terminated.
IPR2014-01220
Patent 6,128,649

4

PETITIONER:

Scott A. McKeown
Greg Gardella
Christopher Ricciuti
Oblon
CPDocketMcKeown@oblon.com
CPDocketGardella@oblon.com
CPDocketRicciuti@oblon.com

PATENT OWNER:

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