Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 18
`Entered: November 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CYPRESS SEMICONDUCTOR CORP.,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`_______________
`
`Cases IPR2014-00397 (Patent 6,833,686 B2)
`IPR2014-00400 (Patent 6,034,623)
`_______________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`Petitioner filed petitions for inter partes review of the two involved patents
`and Patent Owner filed preliminary responses. On July 3, 2014, we instituted trial
`for each case.
`
`

`

`Case IPR2014-00397 (Patent 6,833,686 B2)
`Case IPR2014-00400 (Patent 6,034,623)
`
`
`On November 17, 2014, the parties informed the Board that the parties have
`reached a settlement agreement. The parties seek authorization from the Board to
`file a joint motion to terminate the proceeding pursuant to 35 U.S.C. § 317.
`An inter partes review has been instituted in each case. The Board does not
`have before it full briefing on the issues raised during each trial. Moreover, the
`Board has not entered a final written decision. Generally, the Board expects that a
`proceeding will terminate 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).
`The rule governing settlement indicates that any agreement between the parties
`made in connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
`Based on the facts of these proceedings, the parties are authorized to, and
`shall file, in addition to the settlement agreement, a joint motion to terminate the
`proceeding briefly explaining why termination is appropriate in these cases. The
`joint motion also should update the Board as to the status of any other matters
`involving the patents at issue. The parties also must file, as an exhibit, a true copy
`of their settlement agreement to terminate the proceedings. A redacted version of
`the settlement agreement will not be accepted as a true copy of the settlement
`agreement. Any request that the agreement be treated as business confidential
`information and be kept separate from the files of the involved patent must be filed
`with the settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to
`FAQ G2 on the Board’s website page at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their
`settlement agreement as confidential (e.g., uploading as “Parties and Board Only”).
`The joint motion to terminate and the settlement agreement shall be filed no
`later than November 25, 2014.
`
`

`

`Case IPR2014-00397 (Patent 6,833,686 B2)
`Case IPR2014-00400 (Patent 6,034,623)
`
`
`Accordingly, it is
`ORDERED that the parties are authorized to file a separate joint motion to
`terminate in each proceeding;
`FURTHER ORDERED that the joint motions are due no later than
`November 25, 2014; and
`FURTHER ORDERED that the joint motions shall be accompanied by a
`true copy of the settlement agreement as required by 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that the parties may request that the settlement
`agreement be treated as business confidential information as specified by 37 C.F.R.
`§ 42.74(c); and
`FURTHER ORDERED that any confidential settlement agreement must be
`filed electronically via the Patent Review Processing System (PRPS) in accordance
`with the instructions provided on the Board’s website (e.g., uploading as “Parties
`and Board Only”); and
`FURTHER ORDERED that the remaining DUE DATES in the proceedings
`are vacated.
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case IPR2014-00397 (Patent 6,833,686 B2)
`Case IPR2014-00400 (Patent 6,034,623)
`
`
`PETITIONER:
`
`James Hannah
`Aaron Frankel
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`afrankel@kramerlevin.com
`
`PATENT OWNER:
`
`Robert Mattson
`John Kern
`Christopher Bullard
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, LLP
`cpdocketmattson@oblon.com
`cpdocketkern@oblon.com
`cpdocketbullard@oblon.com
`
`
`
`
`
`
`
`
`
`
`