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Cisco Systems, Inc. v. Constellation Technologies LLC

Docket IPR2014-00911, Patent Trial and Appeal Board (June 6, 2014)
Michael Zecher, Peter Chen, Trevor Jefferson, presiding
Case TypeInter Partes Review
Patent
8134917
Petitioner Cisco Systems, Inc.
Patent Owner Constellation Technologies LLC
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19 Termination Settlement: Judgment

Document IPR2014-00911, No. 19 Termination Settlement - Judgment (P.T.A.B. Feb. 23, 2015)
On February 18, 2015, the parties filed a Joint Motion to terminate this proceeding (Paper 18), as well as a Joint Request (Paper 17) to have their written settlement agreement treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
The parties indicated in their Joint Motion that termination of this proceeding is appropriate because they have reached an agreement regarding their dispute with respect to U.S. Patent No. 8,134,917 B2 (“the ’917 patent”).
The parties did not identify any other related district court cases involving the ’917 patent.
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.” As the parties indicate in their Joint Motion, this proceeding is in its early stages.
ORDERED that the parties’ Joint Request that the settlement agreement (Ex. 1016) be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and ORDERED that the parties’ Joint Motion to terminate this proceeding is GRANTED, and this proceeding is hereby terminated.
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16 Notice: DECISION Patent Owners Motion to Withdraw Counsel

Document IPR2014-00911, No. 16 Notice - DECISION Patent Owners Motion to Withdraw Counsel (P.T.A.B. Feb. 12, 2015)
Former Patent Owner, Constellation Technologies, LLC (“Constellation”), filed a Motion to Withdraw Counsel under 37 C.F.R. § 42.10(e).
In its Motion, Constellation requests that we allow its counsel—namely, Messrs. Babak Redjaian and Kamran Vakili—to withdraw from this proceeding because RPX Clearinghouse LLC (“RPX”) became the owner of U.S. Patent No. 8,134,917 B2 (“the ’917 patent”) by assignment on January 28, 2015.
Constellation indicates that RPX already filed an Updated Mandatory Notice identifying new lead and back-up counsel as Messrs. Andrew R. Sommer and Mike Tomasulo.
In addition, Constellation represents that Petitioner, Cisco Systems, Inc., does not oppose this Motion.
In consideration of the foregoing, it is ORDERED that Constellation may withdraw its counsel from this proceeding
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11 Order: Order re Initial Conference Call

Document IPR2014-00911, No. 11 Order - Order re Initial Conference Call (P.T.A.B. Feb. 3, 2015)
An initial conference call in the above-captioned proceeding was held on January 14, 2015, between respective counsel for Petitioner and Patent Owner, and Judges Zecher, Jefferson, and Chen.
Prior to the call, neither party filed a list of proposed motions.
We discussed with the parties the possible settlement of this case, and of related district court litigation, as has been reported in the media and otherwise publicized by the parties since last fall.
The parties indicated they would keep the Board apprised of progress toward any settlement.
Except as provided otherwise, the parties are reminded to seek prior authorization with the Board before filing a motion in this proceeding.
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8 Institution Decision: Decision Institution of Inter Partes Review 37 CFR 42108

Document IPR2014-00911, No. 8 Institution Decision - Decision Institution of Inter Partes Review 37 CFR 42108 (P.T.A.B. Dec. 15, 2014)

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9 Order: Scheduling Order

Document IPR2014-00911, No. 9 Order - Scheduling Order (P.T.A.B. Dec. 15, 2014)
A notice of the stipulation, specifically identifying the changed due dates, must be promptly filed.
The parties are reminded that the Testimony Guidelines appended to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012) (Appendix D), apply to this proceeding.
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
The parties are directed to the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,765–66 for guidance in preparing for the initial conference call, and should be prepared to discuss any proposed changes to this Scheduling Order and any motions the parties anticipate filing during the trial.
The petitioner must file any reply to the patent owner’s response and opposition to the motion to amend by DUE DATE 2.
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3 Notice of Filing Date Accorded to Petition: Notice of Filing Date Accorded to Petition

Document IPR2014-00911, No. 3 Notice of Filing Date Accorded to Petition - Notice of Filing Date Accorded to Petition (P.T.A.B. Jun. 25, 2014)
Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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17 Motion: Joint Request to File Agreement as BCI

Document IPR2014-00911, No. 17 Motion - Joint Request to File Agreement as BCI (P.T.A.B. Feb. 18, 2015)
Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner Cisco Systems Inc. and Patent Owner RPX Clearinghouse LLC (“Patent Owner”) jointly request to file the patent license agreement between the parties, as referenced in the Joint Motion to Terminate Proceedings Pursuant to 35 U.S.C. § 317, as business confidential information, which shall be kept separate from the file of the involved Respectfully submitted, /Andrew R. Sommer/ Andrew R. Sommer Reg. No. 53,932 Lead Counsel for Patent Owner RPX Clearinghouse LLC /David L. McCombs/ David L. McCombs Reg. No. 32,271 Lead Attorney for Petitioner Cisco Systems, Inc. patents.
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