`571-272-7822
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`Paper 18
`Entered: February 25, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CISCO SYSTEMS, INC.,
`Petitioner,
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`v.
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`BOCKSTAR TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01194
`Patent 6,233,245 B1
`____________
`
`
`Before MICHAEL R. ZECHER, GLENN J. PERRY, and
`JAMES A. TARTAL, Administrative Patent Judges.
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`TARTAL, Administrative Patent Judge.
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`DECISION
`Termination of Proceeding
`37 C.F.R. § 42.72
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`
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`IPR2014-01194
`Patent 6,233,245 B1
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`I. DISCUSSION
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`On February 20, 2015, the parties filed a Joint Motion to Terminate
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`Proceedings (Paper 15), as well as a Joint Request (Paper 16) to have their
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`settlement agreement treated as business confidential information under 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties also filed a true copy
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`of their written settlement agreement. Ex. 1014. The parties indicated in
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`their Joint Motion to Terminate that termination of this proceeding is
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`appropriate because they have reached an agreement regarding their dispute
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`with respect to U.S. Patent No. 6,233,245 B1 (“the ’245 patent”). See Paper
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`15, 4–7. The parties indicated that the co-pending district court cases
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`involving the ’245 patent have been dismissed. Id. at 7.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
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`this chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and patent owner, unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.” As the
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`parties indicate in their Joint Motion to Terminate, this proceeding is in its
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`early stages. Paper 15, 4. Although we instituted an inter partes review of
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`claims 1–16 of the ’245 patent on January 26, 2015 (Paper 8), Patent Owner
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`has not filed a Patent Owner Response.
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`Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
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`understanding between the parties made in connection with, or in
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`contemplation of, the termination of a proceeding shall be in writing and a
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`true copy shall be filed with the Board before termination of the trial.” As
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`the parties have filed their written settlement agreement, and the co-pending
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`district court cases have been dismissed, we determine that it is appropriate
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`2
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`IPR2014-01194
`Patent 6,233,245 B1
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`to terminate this proceeding without rendering a Final Written Decision as to
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`the patentability of claims 1–16 of the ’245 patent. See 37 C.F.R. §§ 42.72,
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`42.73, 42.74.
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`Accordingly, it is:
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`II. ORDER
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`ORDERED that the parties’ Joint Request to File Agreement as
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`Business Confidential Information Pursuant to 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c) is GRANTED; and
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`ORDERED that the parties’ Joint Motion to Terminate Proceedings is
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`GRANTED, and this proceeding is hereby terminated.
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`3
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`IPR2014-01194
`Patent 6,233,245 B1
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`PETITIONER
`Barton E. Showalter
`Chad C. Walters
`Douglas M. Kubehl
`BAKER BOTTS L.L.P.
`bart.showalter@bakerbotts.com
`chad.walters@bakerbotts.com
`doug.kubehl@bakerbotts.com
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`
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`PATENT OWNERS
`
`Andrew R. Sommer
`Mike Tomasulo
`WINSTON & STRAWN LLP
`asommer@winston.com
`mtomasulo@winston.com
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`4
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