`Tel: 571-272-7822
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`Paper 19
`Entered: May 28, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`AT&T MOBILITY LLC,
`Petitioner,
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`v.
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`SOLOCRON MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-003421
`Patent 6,496,692 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, JACQUELINE W. BONILLA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
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`BOUCHER, Administrative Patent Judge.
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`JUDGMENT
`Termination of Proceeding
`35 U.S.C. § 317
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`
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`1 This order addresses the same issue in the inter partes reviews listed in the
`Appendix. Therefore, we issue one order to be filed in all of the cases. The
`parties, however, are not authorized to use this style of filing in subsequent papers,
`without prior authorization.
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`
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`IPR2015-00342
`Patent 6,496,692 B1
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`On May 14, 2015, we terminated each of the proceedings identified in the
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`Appendix (“these proceedings”) with respect to Cellco Partnership d/b/a Verizon
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`Wireless, one of two parties previously designated as a Petitioner. Paper 17. On
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`May 20, 2015, the parties moved for termination of these proceedings pursuant to
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`35 U.S.C. § 3172 with respect to all parties, representing that the only remaining
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`Petitioner, AT&T Mobility LLC, and Patent Owner “have settled their dispute,
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`including reaching agreement to terminate [these] inter partes review[s] with
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`respect to AT&T.” Paper 18.
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`With their motion to terminate, the parties filed a copy of a joint stipulated
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`motion to dismiss the related district-court matter with prejudice to Petitioner. Ex.
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`1040. The parties also filed a copy of what they represent is a “true and correct
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`copy” of their written agreement in accordance with 35 U.S.C. § 317(b). Ex. 1041.
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`The parties request that the agreement be treated as business confidential
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`information under 35 U.S.C. § 317(b).3 Paper 19.
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`Each of these proceedings is in an early stage and no decision whether to
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`institute inter partes reviews has been made. Under these circumstances, we
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`determine that it is appropriate to terminate these proceedings. The outstanding
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`order of May 5, 2015 (Paper 11) accordingly is moot.
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`It is
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`ORDERED that the Board’s order of May 5, 2015 (Paper 11) is vacated;
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`2 The statute specifically addresses settlement after institution of an inter partes
`review. Similar considerations apply when parties settle before a decision on
`institution.
`3 The motion’s caption refers correctly to 35 U.S.C. § 317(b), but the body of the
`motion refers incorrectly to 35 U.S.C. § 327(b). The error is harmless.
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`IPR2015-00342
`Patent 6,496,692 B1
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`FURTHER ORDERED that the joint motions to terminate the proceedings
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`identified in the Appendix are granted with respect to all parties; and
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`FURTHER ORDERED that the joint requests that the settlement agreement
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`be treated as business confidential information and be kept separate from the file of
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`the involved patents under the provisions of 35 U.S.C. § 317(b), i.e. to be made
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`available only to Federal Government agencies on written request, or to any person
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`on a showing of good cause, are granted.
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`IPR2015-00342
`Patent 6,496,692 B1
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`FOR PETITIONER:
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`Kevin Anderson
`kanderson@wileyrein.com
`
`Floyd Chapman
`fchapman@wileyrein.com
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`Scott Felder
`sfelder@wileyrein.com
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`Theodore Stevenson, III
`tstevenson@mckoolsmith.com
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`Scott Hejny
`shejny@mckoolsmith.com
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`Nicholas Matthews
`nmathews@mckoolsmith.com
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`FOR PATENT OWNER:
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`Kenneth Weatherwax
`weatherwax@lowensteinweatherwax.com
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`Patrick Maloney
`maloney@lowensteinweatherwax.com
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`IPR2015-00342
`Patent 6,496,692 B1
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`APPENDIX
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`U.S. Patent No.
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`Inter Partes Review
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`6,496,692 B1
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`IPR2015-00342
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`7,319,866 B2
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`7,257,395 B2
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`7,295,864 B2
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`8,594,651 B2
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`7,742,759 B2
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`IPR2015-00349
`IPR2015-00376
`IPR2015-00350
`IPR2015-00391
`IPR2015-00392
`IPR2015-00364
`IPR2015-00380
`IPR2015-00383
`IPR2015-00387
`IPR2015-00388
`IPR2015-00389
`IPR2015-00390
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