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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)
First, Patent Owner argues that Swallow does not teach or suggest the limitation in independent claims 1 and 9 reciting that the backup routing path is established prior to a link failure.
We disagree, as on the present record Petitioner’s evidence sufficiently demonstrates that this limitation is taught or suggested by Swallow, namely, that the bypass tunnel (backup routing path) may be established before the communication link failure.
On the present record, therefore, we are persuaded there is a reasonable likelihood of Petitioner prevailing in establishing the unpatentability of claims 2, 10, and 11 of the ’917 patent as obvious over the combination of Swallow, Callon, and Baker.
Petitioner also provides an articulated reason with a rational underpinning that explains why one of ordinary skill in the art would have combined the source and destination labels of Teraslinna with the apparatus and method of Swallow.
On the present record, therefore, we are persuaded there is a reasonable likelihood of Petitioner prevailing in establishing the unpatentability of claims 4 and 14 of the ’917 patent as obvious over the combination of Swallow, Callon, and Teraslinna.
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9 Order: Scheduling Order

Document IPR2014-00911, No. 9 Order - Scheduling Order (P.T.A.B. Dec. 15, 2014)

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3 Notice of Filing Date Accorded to Petition: Notice of Filing Date Accorded to Petitio...

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)

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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)

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