Paper No. 13
`Trials@uspto.gov
`571-272-7822 Entered: January 7, 2016
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`KYOCERA COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01559
`Patent 8,385,966 B2
`____________
`
`
`
`
`
`Before JENNIFER S. BISK, GREGG I. ANDERSON,
`WILLIAM M. FINK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Joint Motion to Terminate
`37 C.F.R. § 42.5(a), 42.71(a)
`
`
`
`

`
` 
`
`IPR2015-01559
`Patent 8,385,966 B2
`
`On January 6, 2015, the parties filed a “Joint Motion to Terminate
`Proceeding Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74” (“Motion,”
`“Mot.,” Paper 11) based on a settlement that resolves the parties’ disputes
`related to the challenged patent. The parties also reached settlement in
`IPR2015-01564 and are concurrently requesting termination of that
`proceeding. Mot. 2, 7. The parties concurrently filed a true copy of the
`settlement agreement (Ex. 1017) along with a “Joint Stipulation of Dismissal”
`(Ex. 1018) in the related litigation, Civil Action No.6:14-cv-982 (E.D. Texas)
`(Consolidated Lead Case) (“District Court Litigation”). The parties request
`that Exhibits 1017 and 10181 be treated as business confidential information
`and be kept separate from the underlying files, as provided in 35 U.S.C. §
`317(b) and 37 C.F.R. § 42.74(c) (“A party to a settlement may request that the
`settlement be treated as business confidential information and be kept separate
`from the files of an involved patent or application.”). Id. at 3.
`The parties jointly certify that there is no other agreement or
`understanding between them, including any collateral agreements, made in
`connection with, or in contemplation of termination of the instant proceeding
`as set forth in 35 U.S.C. § 317(b). Id. at 4-5. The parties have identified all
`the parties in the District Court Litigation with respect to US Patent 8,385,966
`(“’966 patent”). Id. at 5–6. The parties have also identified other inter partes
`review proceedings involving the ’966 patent. Id. at 6. The status of all
`pending litigation involving the ’966 patent has been provided. Id. at 6.
`
`
`
`                                                            
`1 The parties ask that the “settlement agreement documents” be treated as
`business confidential information. While the stipulation for dismissal appears
`to be a publicly available document, we include it as business confidential
`information. Any third party seeking to review it may have access through the
`files of the District Court Litigation as identified herein.
`2 
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` 
`
`

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` 
`
`IPR2015-01559
`Patent 8,385,966 B2
`
`We have not yet entered a decision on institution in the proceeding.
`Under these circumstances, we determine that it is appropriate to dismiss the
`Petition. See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does not constitute a
`final written decision pursuant to 35 U.S.C. § 318(a).
`ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate is granted; and
`FURTHER ORDERED that that the settlement agreement (Exhibit
`1017) and stipulation of dismissal (Exhibit 1018) be treated as business
`confidential information, be designated “Parties and Board Only,” and both
`will be kept separate from the files of the involved U.S. Patent No. 8,385,966.
`
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`3 
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`

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`IPR2015-01559
`Patent 8,385,966 B2
`
`
`For PETITIONER:
`
`Paul Hunter
`Troy Smith
`FOLEY & LARDNER LLP
`phunter@foley.com
`tdsmith@foley.com
`For PATENT OWNER:
`
`Barry Bumgardner
`Matthew Juren
`NELSON BUMGARDNER, P.C.
`barry@nelbum.com
`matthew@nelbum.com
`CCE-IPR@nelbum.com
`
`Amedeo Ferraro
`MARTIN & FERRARO, LLP
`aferraro@martinferraro.com
`
`
` 
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`4