Paper No. ___
`Filed: September 10, 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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`VERIZON SERVICES CORP., VERIZON SOUTH INC., VERIZON VIRGINIA
`LLC, VERIZON COMMUNICATIONS INC., VERIZON FEDERAL INC.,
`VERIZON BUSINESS NETWORK SERVICES INC., AND MCI
`COMMUNICATIONS SERVICES, INC.
`Petitioners,
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`v.
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`SPHERIX INCORPORATED
`Patent Owner.
`_________________
`
`Case IPR2015-01381
`Patent No. 6,980,564
`___________________
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`JOINT MOTION TO TERMINATE THE PROCEEDING
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`AND
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`JOINT REQUEST TO TREAT SETTLEMENT
`AGREEMENT AS BUSINESS CONFIDENTIAL
`UNDER 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
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`1
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`Filed: September 10, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
` _________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`VERIZON SERVICES CORP., VERIZON SOUTH INC., VERIZON VIRGINIA
`LLC, VERIZON COMMUNICATIONS INC., VERIZON FEDERAL INC.,
`VERIZON BUSINESS NETWORK SERVICES INC., AND MCI
`COMMUNICATIONS SERVICES, INC.
`Petitioners,
`
`v.
`
`SPHERIX INCORPORATED
`Patent Owner.
`_________________
`
`Case IPR2015-01381
`Patent No. 6,980,564
`___________________
`
`JOINT MOTION TO TERMINATE THE PROCEEDING
`
`AND
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`JOINT REQUEST TO TREAT SETTLEMENT
`AGREEMENT AS BUSINESS CONFIDENTIAL
`UNDER 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
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`1
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioners Verizon Services Corp., Verizon
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`South Inc., Verizon Virginia LLC, Verizon Communications Inc., Verizon Federal
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`Inc., Verizon Business Network Services Inc., and MCI Communications Services,
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`Inc. (collectively “Petitioners”) and Patent Owner Spherix Incorporated (“Patent
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`Owner”) jointly request termination of the inter partes review of U.S. Patent No.
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`6,980,564, Case IPR2015-01381, based on a settlement between Petitioners and
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`Patent Owner.
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`II. REASONS FOR GRANTING THE MOTION
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
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`instant joint motion and request on September 3, 2015. IPR2013-00428, Paper No.
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`56 provides guidance as to the content of a motion to terminate. There, the Board
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`indicates that a joint motion, such as this one, should (1) include a brief
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`explanation as to why termination is appropriate; (2) identify all parties in any
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`related litigation involving the patent at issue; (3) identify any related proceedings
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`currently before the Office, and (4) discuss specifically the current status of each
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`such related litigation or proceeding with respect to each party to the litigation or
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`proceeding. Id. at 2. This motion satisfies each of the above requirements and is
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`2
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`accompanied by a true copy of the Parties’ fully-executed settlement agreement, as
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`required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
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`a.
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`Brief Explanation of Why Termination is Appropriate
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`Termination is appropriate because the Parties have settled their dispute and
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`this inter partes review has not been instituted. Petitioners filed their petition for
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`inter partes review on June 11, 2015. Patent Owner has not filed a preliminary
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`response, and one is not due until September 17, 2015. The Parties have settled
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`their dispute, and have reached agreement to terminate this inter partes review
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`proceeding, as well as the Parties’ related district court litigation regarding the ’564
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`patent: Spherix Incorporated v. Verizon Services Corp., Verizon South Inc.,
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`Verizon Virginia LLC, Verizon Communications Inc., Verizon Federal Inc.,
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`Verizon Business Network Services Inc., MCI Communications Services, Inc., Civil
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`Action No. 1:14-cv-721-GBL-TCB (E.D. Virginia). There is no other pending
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`litigation involving the ’564 patent.
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`b.
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`All Parties in Any Pending Related Litigation Involving the
`Patent at Issue
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`As noted above in Section II.a, Petitioners and Patent Owner are parties in a
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`related district court litigation, which the parties also have settled.
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`c.
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`Related Proceedings Currently Before the Office
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`Aside from this inter partes review proceeding, the ’564 patent is not
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`involved in any other proceeding currently before the Office.
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`3
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`d.
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`Current Status of Each Such Related Litigation or
`Proceeding With Respect to Each Party to the Litigation or
`Proceeding
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`Sections II.a and b above indicate that the Parties have settled their dispute
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`in the related district court litigation.
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`III. SETTLEMENT AGREEMENT
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
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`Settlement Agreement has been made in writing, and a true and correct copy is
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`being filed concurrently herewith as Exhibit 1010.1
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s
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`authorization of the filing of this joint request in its email to the Parties on
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`September 3, 2015, the Parties jointly request that the true copy of the Settlement
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`Agreement filed concurrently herewith as Exhibit 1010 be treated as business
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`confidential information, which shall be kept separate from the file of U.S. Patent
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`No. 6,980,564. The Parties further request the Board to not make Exhibit 1010
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`available to any third party, except as provided for in 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c).
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`1 The Settlement Agreement is being filed via the Patent Review Processing
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`System (PRPS) with access to “Parties and Board Only.”
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`4
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`IV. CONCLUSION
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`For all of these reasons, Petitioners and Patent Owner respectfully request
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`termination of the inter partes review of U.S. Patent No. 6,980,564, Case
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`IPR2015-01381.
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`As stated in 35 U.S.C. § 317(a), because Petitioners and Patent Owner
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`request this termination as to Petitioners, no estoppel under 35 U.S.C. § 315(e)
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`shall attach to Petitioners.
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` Respectfully submitted,
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`
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`DATED: September 10, 2015 By:
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`Dinesh N. Melwani (Reg. No. 60,670)
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`Roland G. McAndrews (Reg. No. 41,450)
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`Aaron M. Johnson (Reg. No. 66,945)
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`Bookoff McAndrews, PLLC
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`2401 Pennsylvania Ave., NW, Suite 450
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`Washington, DC, 20037
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`Attorneys for Petitioners
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`By: /Darrell G. Dotson (Reg. No. 44,661)/
`Darrell G. Dotson (Reg. No. 44,661)
`Spherix Incorporated
`222 N. Fredonia St.
`Longview, Texas 75601
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`Attorney for Patent Owner
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`5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and 42.105(a), I hereby certify that
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`a true and correct copy of the foregoing, JOINT MOTION TO TERMINATE
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`THE PROCEEDING AND JOINT REQUEST TO TREAT SETTLEMENT
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`AGREEMENT AS BUSINESS CONFIDENTIAL UNDER 35 U.S.C. § 317(b)
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`AND 37 C.F.R. § 42.74(c), AND VERIZON SERVICES CORP. ET AL.'S
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`EXHIBIT 1010, were served on September 10, 2015, via electronic mail on
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`counsel of record for the Patent Owner at the correspondence address of the Patent
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`Owner as follows:
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`Darrell G. Dotson, Esq.
`Spherix Incorporated
`222 N. Fredonia St.
`Longview, Texas 75601
`Telephone: 903-212-3113
`Email: ddotson@spherix.com
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`Dated: September 10, 2015
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`Respectfully submitted,
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`By: ________________
`Dinesh N. Melwani
`Reg. No. 60,670
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