`571-272-7822
`
`Paper 19
`Entered: February 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`RPX CLEARINGHOUSE LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00911
`Patent 8,134,917 B2
`
`
`
`Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and
`PETER P. CHEN, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`Termination of the Proceeding
`37 C.F.R. § 42.72
`
`
`
`
`
`IPR2014-00911
`Patent 8,134,917 B2
`
`
`I.
`
`DISCUSSION
`
`On February 18, 2015, the parties filed a Joint Motion to terminate
`
`this proceeding (Paper 18), as well as a Joint Request (Paper 17) to have
`
`their written settlement agreement treated as business confidential
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties
`
`also filed a true copy of their written settlement agreement. Ex. 1016. The
`
`parties indicated in their Joint Motion that termination of this proceeding is
`
`appropriate because they have reached an agreement regarding their dispute
`
`with respect to U.S. Patent No. 8,134,917 B2 (“the ’917 patent”). See Paper
`
`18, 4–7. The parties indicated that the co-pending district court cases
`
`involving the ’917 patent have been dismissed. Id. at 7. The parties did not
`
`identify any other related district court cases involving the ’917 patent.
`
`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.” As the
`
`parties indicate in their Joint Motion, this proceeding is in its early stages.
`
`Paper 18, 5. Although we instituted an inter partes review of claims 1–18 of
`
`the ’917 patent on December 15, 2014 (Paper 8), and have held an initial
`
`conference call, the proceeding is in its early stages and Patent Owner, RPX
`
`Clearinghouse, Inc., has not taken discovery or filed a Patent Owner
`
`Response.
`
`Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
`
`understanding between the parties made in connection with, or in
`
`contemplation of, the termination of a proceeding shall be in writing and a
`
`true copy shall be filed with the Board before termination of the trial.” As
`
`
`
`2
`
`
`
`IPR2014-00911
`Patent 8,134,917 B2
`
`the parties have filed their written settlement agreement, and the co-pending
`
`district court cases have been dismissed, we determine that it is appropriate
`
`to terminate this proceeding without rendering a Final Written Decision as to
`
`the patentability of claims 1–18 of the ’917 patent. See 37 C.F.R. §§ 42.72,
`
`42.73, 42.74.
`
`
`
`Accordingly, it is:
`
`II. ORDER
`
`ORDERED that the parties’ Joint Request that the settlement
`
`agreement (Ex. 1016) be treated as business confidential information under
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and
`
`ORDERED that the parties’ Joint Motion to terminate this proceeding
`
`is GRANTED, and this proceeding is hereby terminated.
`
`
`
`3
`
`
`
`IPR2014-00911
`Patent 8,134,917 B2
`
`For PETITIONER:
`
`David McCombs
`Theo M. Foster
`John Russell Emerson
`Haynes and Boone, LLP
`david.mccombs.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`
`
`For PATENT OWNER:
`
`Andrew R. Sommer
`Mike Tomasulo
`Winston & Strawn LLP
`asommer@winston.com
`mtomasulo@winston.com
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
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