`571-272-7822
`
`Paper No. 15
`Entered: January 17, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`CORNING OPTICAL COMMUNICATIONS RF LLC,
`CORNING INCORPORATED, and
`CORNING OPTICAL COMMUNICATIONS LLC,
`Petitioners,
`
`v.
`
`PPC BROADBAND, INC.
`Patent Owner.
`____________
`
`IPR2016-01569
`Patent 8,075,338 B1
`____________
`
`
`
`Before JOSIAH C. COCKS, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Termination of the Proceeding
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74
`
`
`
`IPR2016-01569
`Patent 8,075,338 B1
`
`DISCUSSION
`On January 4, 2017, in response to a joint email request from the
`
`parties, we sent an email communication authorizing the parties to file joint
`motions to terminate in this case and in co-pending Cases IPR2016-01570,
`IPR2016-01572, and IPR2016-01573, as well as authorizing joint requests to
`file settlement agreements as business confidential information. On January
`12, 2017, the parties filed a Joint Motion to Terminate (Paper 12, “Joint
`Mot.”) in this proceeding, and a Joint Request To Treat Settlement
`Agreement As Business Confidential Information Pursuant To 35 U.S.C.
`§ 317(b) and 37 C.F.R § 42.74(c) (Paper 13, “Joint Req.”). The parties also
`filed a true copy of their written Settlement Agreement under 37 C.F.R.
`§ 42.74(b). Ex. 2031. For the reasons discussed below, the Joint Motion to
`Terminate and the Joint Request To Treat the Settlement Agreement As
`Business Confidential Information are granted.
`
`In the Joint Motion to Terminate, the parties indicate that termination
`of this proceeding is appropriate because they have reached a settlement
`regarding their disputes involving U.S. Patent No. Patent 8,075,338 B1 (“the
`’338 patent”). Joint Mot. 1. According to the parties, the associated
`Settlement Agreement requires the parties to jointly request termination of
`this IPR. Id. The parties represent that, pursuant to the Settlement
`Agreement, all claims have been dismissed with prejudice in the related
`litigation by a January 3, 2017 order (Ex. 2032). Id. at 2. The parties
`represent that there are no other litigations involving the ’338 patent, and
`there are no pending, related inter partes review proceedings or U.S. Patent
`and Trademark Office proceedings, aside from co-pending Case IPR2016-
`01573. Id. at 2–3. The parties represent that, except for the Settlement
`Agreement, there are no other collateral agreements or understandings made
`
`
`
`IPR2016-01569
`Patent 8,075,338 B1
`that relate to the termination of this IPR. Id. at 3. As the parties also
`indicate, the proceeding is at an early stage, and trial has not been instituted.
`See id. at 2.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” Further,
`under 37 C.F.R. § 42.74(b), “[a]ny agreement or understanding between the
`parties made in connection with, or in contemplation of, the termination of a
`proceeding shall be in writing and a true copy shall be filed with the Board
`before termination of the trial.”
`
`There are strong public policy reasons to favor settlement between the
`parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012). When, as here, the proceeding is still in its
`preliminary stages and we have not entered a decision on whether or not to
`institute an inter partes proceeding, we generally expect that the proceeding
`will terminate after the filing of a settlement agreement. See id. Because the
`parties have filed their written settlement agreement, and the related district
`court litigation was dismissed with prejudice, we determine that it is
`appropriate to terminate this proceeding. See 37 C.F.R. §§ 42.72, 42.74.
`
`
`II. ORDER
`
`Accordingly, it is:
`
`ORDERED that the parties’ request to treat the settlement agreement
`
`(Ex. 2031) as business confidential information under 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c) is GRANTED; and
`
`3
`
`
`
`IPR2016-01569
`Patent 8,075,338 B1
`
`FURTHER ORDERED that the parties’ Joint Motion to Terminate is
`GRANTED, and this proceeding is hereby terminated.
`
`For PETITIONER:
`
`Todd R. Walters
`Roger H. Lee
`Jonathan R. Bowser
`Kyle K. Tsui
`BUCHANAN INGERSOLL & ROONEY PC
`todd.walters@bipc.com
`roger.lee@bipc.com
`jon.bowser@bipc.com
`kyle.tsui@bipc.com
`
`
`For PATENT OWNER:
`
`Denis J. Sullivan
`Thomas Hoehner
`Douglas J. Nash
`BARCLAY DAMON, LLP
`dsullivan@barclaydamon.com
`thoehner@barclaydamon.com
`dnash@barclaydamon.com
`
`4
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