RPX Corporationv.Multiplayer Network Innovations, LLCDownload PDFPatent Trial and Appeal BoardMar 23, 201508385485 (P.T.A.B. Mar. 23, 2015) Copy Citation Trials@uspto.gov Paper 9 571-272-7822 Entered: March 23, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ RPX CORPORATION, Petitioner, v. MULTIPLAYER NETWORK INNOVATIONS, LLC, Patent Owner. ____________ Case IPR2015-00553 Patent 5,618,045 ____________ Before MICHAEL W. KIM, JAMES P. CALVE, and JAMES A. WORTH, Administrative Patent Judges. KIM, Administrative Patent Judge. JUDGMENT Termination of the Proceeding 37 C.F.R. § 42.72 The parties have requested that the above-captioned proceeding be terminated pursuant to a settlement. The Board authorized the parties to file a joint request to terminate the above-captioned proceeding. On March 19, 2015, and pursuant to 35 U.S.C. § 317, the parties filed a Joint Motion to Terminate Proceedings (Paper 6), along with a copy of a License Agreement (Ex. 1010). The parties concurrently filed a Joint Request to File the IPR2015-00553 Patent 5,618,045 2 Agreement as Business Confidential Information, to be kept separate from the file of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 8). 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.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 317(a), “[i]f 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).” RPX Corporation is the sole petitioner in this review. The Board has discretion to terminate this review with respect to Multiplayer Network Innovations, LLC as Patent Owner. The Joint Motion to Terminate indicates that the parties request termination of this proceeding pursuant to settlement, and have memorialized the parties’ agreement with respect to termination of this proceeding in the license agreement. Paper 6, 1, 6; Ex. 1010. The Joint Motion to Terminate indicates also that the parties certify that no other agreements have been reached between the parties in contemplation of terminating the instant proceeding. Paper 6, 6. The Petition (Paper 2, 2) and Submission of Mandatory Notice Information (Paper 4, 2) identified 27 district court proceedings involving the ’045 patent, and the Joint Motion to Terminate indicates that only 5 are currently pending, the rest having been dismissed. Paper 6, 5-6. Petitioner filed the Petition on January 12, 2015. No other substantive papers have been filed, and this proceeding has not resulted in either a decision to institute or a final decision on the merits. IPR2015-00553 Patent 5,618,045 3 Based on the facts of the case, it is appropriate to terminate the proceeding as to both Petitioner and Patent Owner. Accordingly, it is ORDERED that the Joint Request to File the Agreement as Business Confidential Information, to be kept separate from the file of the involved patent, is granted; FURTHER ORDERED that the Joint Motion to Terminate Proceedings is granted; and FURTHER ORDERED that the proceeding is terminated. IPR2015-00553 Patent 5,618,045 4 For PETITIONER: Andrew R. Sommer Michael Tomasulo WINSTON & STRAWN LLP asommer@winston.com mtomasulo@winston.com For PATENT OWNER Amir Naini Jay Chung RUSS AUGUST & KABAT anaini@raklaw.com jchung@raklaw.com Copy with citationCopy as parenthetical citation