Dell, Inc.v.Selene Communication Technologies, LLC

Patent Trial and Appeal Board

Jun 10, 2015

09218570 (P.T.A.B. Jun. 10, 2015)

Trials@uspto.gov
571-272-7822
Paper No. 36
Date Entered: June 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

THOMSON REUTERS CORPORATION,
Petitioner,

v.

SELENE COMMUNICATION
TECHNOLOGIES, LLC,
Patent Owner.
____________

Case IPR2014-01411
Patent 6,363,377 B1
____________

Before JONI Y. CHANG, TINA E. HULSE, and JASON J. CHUNG,
Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37C.F.R. § 42.73
IPR2014-01411
Patent 6,363,377 B1

2

On June 5, 2015, Patent Owner Selene Communication Technologies, LLC
(“Selene”) and Petitioner Thomson Reuters Corporation (“Thomson”) filed a joint
motion to terminate the trial proceeding under 35 U.S.C. § 317(a) (Paper 34), a
true copy of the written settlement agreement (Ex. 2005), and a joint request to
maintain confidentiality and to keep separate pursuant to 35 U.S.C. § 317 (b) and
37 C.F.R. § 42.74 (Paper 35).
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.”
Generally, the Board expects that a proceeding will terminate as to settling
parties after the filing of a settlement agreement. See, e.g., Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). On February 26,
2015, the Board determined, under 35 U.S.C. § 314, to institute a review in the
instant proceeding. Paper 23. Selene, however, has not filed a Patent Owner
Response, and Thomson has not filed a Reply. More importantly, no final written
decision has been entered in this proceeding, and the parties have filed a joint
motion to dismiss the copending litigation in the District Court. Ex. 3001.
The Board is persuaded that, under these circumstances, it is appropriate to
terminate this proceeding. 37 C.F.R. § 42.73.
Accordingly, it is:
ORDERED that the joint motion to terminate this proceeding with respect to
both parties is GRANTED, and this proceeding is hereby terminated; and
FURTHER ORDERED that the parties’ joint request that the written
settlement agreement (Ex. 2005) be: (i) treated as business confidential
information; (ii) kept separate from the file of the ’377 patent; (iii) kept
IPR2014-01411
Patent 6,363,377 B1

3

confidential from any third party; and (iv) made available only to Federal
Government agencies on written request, or to any person on a showing of good
cause, under the provisions of 35 U.S.C. § 317 (b) and 37 C.F.R. § 42.74(c), is
GRANTED.

PETITIONER:

James M. Heintz
DLA PIPER LLP
Selene_IPR@dlapiper.com

PATENT OWNER:

Tarek N. Fahmi
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com