Case IPR2016-01252
`U.S. Patent No. 8,155,298 B2
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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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`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPENWEST FINANCE, LLC,
`KNOLOGY OF FLORIDA, INC.,
`BIRCH COMMUNICATIONS, INC.,
`Petitioners
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner
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`––––––––––
`
`Case IPR2016-01252
`Patent No. 8,155,298
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`––––––––––
`
`Before JAMILAH SULTAN, Trial Paralegal.
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`PETITIONER’S UNOPPOSED MOTION TO DISMISS PETITION FOR
`INTER PARTES REVIEW
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`U.S. Patent No. 8,155,298 B2
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPENWEST FINANCE, LLC,
`KNOLOGY OF FLORIDA, INC.,
`BIRCH COMMUNICATIONS, INC.,
`Petitioners
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner
`
`––––––––––
`
`Case IPR2016-01252
`Patent No. 8,155,298
`
`––––––––––
`
`Before JAMILAH SULTAN, Trial Paralegal.
`
`PETITIONER’S UNOPPOSED MOTION TO DISMISS PETITION FOR
`INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01252
`U.S. Patent No. 8,155,298 B2
`
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`Bright House Networks, LLC; WideOpenWest Finance, LLC; Knology of
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`Florida, Inc.; Birch Communications, Inc. (collectively “Petitioners”) move the
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`Board for an order dismissing the IPR2016-01252 petition for inter partes review
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`of U.S. Patent No. 8,155,298. Petitioners sought authorization to file the present
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`motion by email on September 26, 2016. Authorization was provided on
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`September 27, 2016. This motion is being filed within the five business day
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`deadline dictated in the email authorizing the filing of this motion. Counsel for
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`Petitioner conferred with counsel for Patent Owner. Patent Owner does not oppose
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`the relief sought by this Motion.
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`I.
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`BACKGROUND
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`Petitioners filed the petition in this matter on June 23, 2016. Paper 1. On
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`July 6, 2016, the Board issued a notice according the petition a filing date of June
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`23, 2016. Paper 6. Right after filing the petition, Petitioners determined that the
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`incorrect entity name was used in the real party-in-interest identification section.
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`In particular, Petitioners listed “Data Connection Ltd. d/b/a Metaswitch Networks”
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`rather than “Metaswitch Networks Ltd.” Petitioners filed an additional petition for
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`inter partes review raising identical grounds and support but correcting the entity
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`name the following day. That petition is the petition in Case No. IPR2016-01263,
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`which has been accorded a filing date of June 24, 2016. As a result, there are
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`1
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`
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`Case IPR2016-01252
`U.S. Patent No. 8,155,298 B2
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`currently two pending petitions challenging the validity of the same claims of the
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`’298 patent based on the same arguments and support, filed by the same
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`Petitioners.
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`II. ARGUMENT
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`Good cause exists for granting Petitioners’ request to withdraw the petition
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`in this case. The Board has the authority to grant Petitioners’ motion under at least
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`37 C.F.R. §§ 42.5(a) and 42.71(a).
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`As an initial matter, the Patent Owner does not oppose this motion.
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`Additionally, IPR2016-01252 is in its early phases, with no preliminary patent
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`owner response on file and no decision on the merits regarding institution reached
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`by the Board. The Board has dismissed early-stage IPRs, like the present IPR, in
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`several other cases. See e.g., Ericsson Inc. and Telefonaktiebolaget LM Ericsson v.
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`Adaptix, Inc., IPR2016-00619, Paper 8 at p. 3 (PTAB May 4, 2016); Apple Inc. v.
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`Telefonaktiebolaget LM Ericsson, IPR2016-00109, Paper 7 at p. 2 (PTAB Jan. 29,
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`2016); Celltrion, Inc. v. Cenetech, Inc., IPR2015-01733, Paper 12 at p. 2 (PTAB.
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`Oct. 6, 2015) (granting unopposed motion to dismiss petition); Under Armour, Inc.
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`v. Adidas AG, IPR2015-01531, Paper 8 at p. 2 (PTAB Sept. 21, 2015) (granting
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`unopposed motion to dismiss petition).
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`2
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`Case IPR2016-01252
`U.S. Patent No. 8,155,298 B2
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`Given the early stages of this IPR, dismissal will ensure that both the
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`Board’s and the parties’ resources are not unnecessarily taxed while advancing the
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`Patent Office’s policy of “secur[ing] the just, speedy, and inexpensive resolution”
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`to the above-captioned IPR. See 37 C.F.R. § 42.1(b). For example, dismissal will
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`mean that the Board will not need to expend resources considering the merits,
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`preparing and issuing an institution decision, and proceeding through trial and a
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`final written decision for IPR2016-01252. For the Patent Owner, the requested
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`dismissal will eliminate the need to prepare duplicative responses and manage
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`deadlines in two otherwise identical proceedings. As such, it would be proper for
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`the Board to dismiss the pending Petition “at this early juncture, to promote
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`efficiency and minimize unnecessary costs.” Ericsson Inc., IPR2016-00619, Paper
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`8 at p. 3. While the Board’s and the Patent Owner’s resources will be spared by
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`the requested dismissal, the requested dismissal will still cause no harm to the
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`public interest because the same challenges to the same claims will be addressed in
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`IPR2016-01263.
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`If the Board should grant Petitioners’ Motion to Dismiss the Petition in the
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`above-captioned IPR, Petitioners additionally request a refund of the post-
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`institution fee paid by Petitioners with the June 23, 2016 petition. As required by
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`37 C.F.R § 42.15(a), Petitioners paid a total of $23,000 in fees, which included a
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`3
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`Case IPR2016-01252
`U.S. Patent No. 8,155,298 B2
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`$9,000 inter partes review request fee and a $14,000 post-institution fee. Because
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`this IPR is in the preliminary-proceeding stage and no institution decision has been
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`rendered, should the Board terminate the IPR, Petitioners would be entitled to a
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`refund of the $14,000 post-institution fee. See, e.g., 78 Fed. Reg. 13, 4233-34
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`(January 18, 2013) (noting that “if the review is not instituted at all, the portion of
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`the fee covering the trial would be returned”). Accordingly, Petitioners request a
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`refund of the post-institution fee in the amount of $14,000.
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`III.
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` CONCLUSION
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`For the foregoing reasons, Petitioners request that the Board dismiss the
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`petition in IPR2016-01252, terminate proceedings on that petition (noting that the
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`decision on the motion does not constitute a final written decision under 35 U.S.C.
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`§ 318(a)), and grant a refund of the post-institution fee paid with that petition.
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`
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`October 4, 2016
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`BAKER BOTTS L.L.P.
`ATTN: Wayne O. Stacy
`2001 Ross Ave., #800
`Dallas, TX 75201
`Tel: (214) 953-6678
`Fax: (214) 661-4678
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`
`
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
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`/Wayne O. Stacy/
`Wayne O. Stacy
`Reg. No. 45,125
`Lead Counsel
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`4
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`Case IPR2016-01252
`U.S. Patent No. 8,155,298 B2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
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`that on October 4, 2016, the foregoing was served electronically via email on the
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`following:
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`By: /Wayne O. Stacy/
`Wayne O. Stacy
`Reg. No. 45,125
`Lead Counsel
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`5
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`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
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`John Murphy
`murphy@nelbum.com
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`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
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