RPX Corporationv.Red Anvil LLC

Patent Trial and Appeal Board

Feb 18, 2016

08441102 (P.T.A.B. Feb. 18, 2016)

Trials@uspto.gov Paper 18
571–272–7822 Entered: February 18, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

RPX CORPORATION, HUAWEI TECHNOLOGIES USA, INC.,
HUAWEI TECHNOLOGIES CO., LTD., HUAWEI DEVICE CO. LTD.,
HUAWEI DEVICE (DONGGUAN) CO., LTD., and
HUAWEI DEVICE USA, INC.,
Petitioner,

v.

RED ANVIL, LLC,
Patent Owner.
_______________

Case IPR2016-00003
Patent No. 5,680,223
_______________

Before TRENTON A. WARD, LYNNE E. PETTIGREW, and
CHRISTA P. ZADO, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

ORDER
Termination of the Proceeding
37 C.F.R. § 42.74

IPR2016-00003
Patent 5,680,223

2
I. INTRODUCTION
On February 1, 2016, the parties filed a Joint Motion to Terminate the
instant proceeding. Paper 16 (“Joint Mot.”). In addition, pursuant to 37
C.F.R. § 42.74(b), the parties filed a copy of their settlement agreement and
a release agreement (collectively, “Agreements”), covering, inter alia, the
patent involved in this proceeding, U.S. Patent No. 5,680,223 (“the ’223
patent”). Exs. 1017, 1018. The parties filed a joint request to have the
Agreements be treated as business confidential information and kept
separate from the files of the patent involved in this proceeding under 37
C.F.R. § 42.74(c). Paper 17. We authorized the filing of these papers.
Paper 14.
II. ANALYSIS
The parties contend that, under 35 U.S.C. § 317(a), termination is
proper because all parties involved in the proceeding request it and the
merits are undecided. Joint Mot. 5; see also 35 U.S.C. § 317(a) (“An 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 parties further contend that the Agreements
are a true and correct copy of all settlement agreements and understandings
between the parties under 37 C.F.R. § 42.74(b), Joint Mot. 6, and that the
Agreements fully resolve and settle the parties’ dispute over the ’223 patent,
id. at 5. This case is in the preliminary proceeding1 stage; no decision

1 A preliminary proceeding begins with the filing of a petition for instituting
a trial and ends with a written decision as to whether trial will be instituted.
37 C.F.R. § 42.2.
IPR2016-00003
Patent 5,680,223

3
whether to institute a trial has been made. Upon review of the procedural
posture of this proceeding and the facts before us, we are persuaded that
good cause exists to terminate the instant proceeding.
All parties filed, along with their Joint Motion to Terminate, a joint
motion requesting that the Agreements be kept separate and treated as
business confidential under 37 C.F.R. § 42.74(c). Paper 17. The parties’
request under 37 C.F.R. § 42.74(c) is granted. Pursuant to 37 C.F.R.
§ 42.74(c), the Agreements “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.”
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that the instant proceeding is hereby
terminated as to all parties; and
FURTHER ORDERED that the Joint Motion to treat the Agreements
as business confidential and keep them separate from the patent file pursuant
to 37 C.F.R. § 42.74(c) is granted.
IPR2016-00003
Patent 5,680,223

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PETITIONER:
John D. Vandenberg
Kristen L. Reichenbach
KLARQUIST SPARKMAN, LLP
john.vandenberg@klarquist.com
kristen.reichenbach@klarquist.com

PATENT OWNER:

Matt Brower
browerlitigation@gmail.com