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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CISCO SYSTEMS, INC.
`Petitioner,
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`v.
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`REALTIME ADAPTIVE STREAMING LLC
`Patent Owner.
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`Case IPR2018-01384
`Patent 8,934,535
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`Patent Owner Realtime Adaptive Streaming LLC and Petitioner Cisco Systems,
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`Inc. have reached a settlement. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R.
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`§§ 42.72 and 42.74, the parties jointly request termination of the inter partes
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`review of U.S. Patent No. 8,934,535 (“’535 Patent”), Case IPR2018-01384. The
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`parties were authorized to file this Joint Motion by the Board (via email) on
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`October 5, 2018.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy
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`of the settlement agreement that resolves the disputes in the above-captioned inter
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`partes review relating to the ’535 Patent is filed herewith as an exhibit. There are
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`no other collateral agreements between the parties made in connection with, or in
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`contemplation of, the termination sought.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties are also
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`concurrently filing a Joint Request to Keep Separate, which asks the Board to treat
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`the settlement agreement exhibit as business confidential information, and to keep
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`it separate from the files of this proceeding and the files of the ’535 Patent.
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`I.
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`Statement of Precise Relief Requested
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`The parties jointly request that the Board terminate the inter partes review of
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`the ’535 Patent, Case IPR2018-01384, with respect to both parties.
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`II. Reasons Why Termination Is Appropriate
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`Termination of this proceeding with respect to both parties is proper. This
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`inter partes review is in its early stage. The Petition was filed on July 12, 2018,
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`and the Board has not yet instituted review on this Petition.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Because both parties
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`request termination, and the Board has not yet decided the merits of the
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`proceeding, the Board must terminate the proceeding with respect to Cisco.
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`When there are no petitioners remaining in the inter partes review, the
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`Board may terminate the proceeding entirely. 35 U.S.C. § 317(a); 37 C.F.R.
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`§ 42.72. Cisco is the only petitioner in this inter partes review. Both parties
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`support termination of this proceeding. With no petitioners remaining in the
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`proceeding and no institution decision or final written decision on the merits,
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`termination with respect to both parties is appropriate.
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`The litigation between the parties involving the ’535 Patent was dismissed
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`on September 24, 2018. The parties do not contemplate any litigation or
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`proceeding involving the ’535 Patent in the foreseeable future.
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`III. No Future Participation by Petitioner Cisco
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`Cisco will not be participating further in this proceeding.
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`IV. Conclusion
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`The parties have settled all disputes relating to the ’535 Patent. This inter
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`partes review is in its early stage, and the Board has not entered an institution
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`decision or a final written decision on the merits in this proceeding. Accordingly,
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`the parties respectfully request the Board to terminate this proceeding in its
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`entirety.
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`Date: October 8, 2018
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`Respectfully submitted,
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` /Kent N. Shum/
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`Kent N. Shum (Reg. No. 61,117)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`kshum@raklaw.com
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`Counsel for Patent Owner Realtime
`Adaptive Streaming LLC
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` /Andrew R. Sommer/
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`Andrew R. Sommer (Reg. No.
`53,932)
`Winston & Strawn LLP
`1700 K Street NW
`Washington, DC 20006
`Phone: (202) 282-5000
`asommer@winston.com
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`Counsel for Petitioner Cisco Systems,
`Inc.
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`October 8, 2018, by filing this document through the Patent Trial and Appeal
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`Board End to End system as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner:
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`Andrew Sommer, asommer@winston.com
`Louis L. Campbell, llcampbell@winston.com
`Katherine Vidal, kvidal@winston.com
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`Date: October 8, 2018
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` /Kent N. Shum/
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`Kent N. Shum (Reg. No. 61,117)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
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`Counsel for Patent Owner Realtime
`Adaptive Streaming LLC
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