`
`571-272-7822
`Date Entered: November 15, 2016
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPRINT SPECTRUM L.P., CELLCO PARTNERSHIP D/B/A VERIZON
`WIRELESS, and AT&T MOBILITY LLC,
`Petitioner,
`
`v.
`
`ADAPTIX, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00824
`Patent 8,934,375 B2
`____________
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON, and
`J. JOHN LEE, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`ORDER
` Termination of the Proceeding
`37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`IPR2016-00824
`Patent 8,934,375 B2
`
`
`
`I. DISCUSSION
`On November 2, 2016, Sprint Spectrum L.P. (“Sprint”), Cellco Partnership
`D/B/A Verizon Wireless (“Verizon”), and AT&T Mobility LLC (“AT&T”)
`(collectively, “Petitioner”) and Adaptix, Inc. (“Adaptix” or “Patent Owner’) filed
`an authorized Joint Motion to Terminate the above-captioned proceeding pursuant
`to 35 U.S.C. § 317. Paper 11 (“Mot”). Petitioner and Patent Owner also filed a
`copy of a license agreement between AT&T and Adaptix, and a copy of a release
`agreement between Verizon and Adaptix Exs. 2103, 2104. Petitioner and Patent
`Owner represent that the filed agreements are true and correct copies. Mot. 2–3.
`Sprint and Adaptix represent that the instant Joint Motion to Terminate along with
`the Joint Motion to Terminate IPR2016-00823 “constitute[] Sprint Spectrum L.P.’s
`and Adaptix’s written agreement to terminate this proceeding.” Id. at 3. Petitioner
`and Patent Owner further represent that there are no collateral agreements or
`understandings made in connection with, or in contemplation of, the termination of
`this proceeding. Id. at 2–4.
`“An inter partes review instituted under this chapter shall be terminated with
`respect to any petitioner upon the joint request of the petitioner and the patent
`owner, unless the Office has decided the merits of the proceeding before the
`request for termination is filed.” 35 U.S.C. § 317(a). We have not yet decided the
`merits of this proceeding, and a final written decision has not yet been entered.
`Petitioner and Patent Owner represent that they have settled their dispute with
`respect to U.S. Patent Number 8,934,375 B2, and that there are no current or
`contemplated pending litigation proceedings involving U.S. Patent Number
`8,934,375 B2. Mot. 2, 4. Accordingly, we determine that good cause exists to
`terminate this proceeding.
`
`
`
`2
`
`
`
`IPR2016-00824
`Patent 8,934,375 B2
`
`
`Petitioner and Patent Owner also filed a Joint Motion to File Agreements as
`Business Confidential Information, requesting that the agreement between AT&T
`and Adaptix and the agreement between Verizon and Adaptix be kept separate
`from the file of the challenged patent. Paper 12.
`“At the request of a party to the proceeding, the agreement or understanding
`shall be treated as business confidential information, shall be kept separate from
`the file of the involved patents, and shall be made available only to Federal
`Government agencies on written request, or to any person on a showing of good
`cause.” 35 U.S.C. § 317(b). After reviewing the agreement between AT&T and
`Adaptix, and the agreement between Verizon and Adaptix, we find that the
`agreements contain confidential business information regarding the terms of
`settlement. We determine that good cause exists to treat the agreement between
`AT&T and Adaptix, and the agreement between Verizon and Adaptix as business
`confidential information under 35 U.S.C. § 317(b).
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate (Paper 11) is granted;
`FURTHER ORDERED that this proceeding is hereby terminated; and
`FURTHER ORDERED that the Joint Motion to File Settlement Agreement
`as Business Confidential Information (Paper 12) is granted, and the Agreement
`between AT&T and Adaptix, and the Agreement between Verizon and Adaptix
`will be treated as business confidential information under 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) and be kept separate from the publicly available file of the
`challenged patent.
`
`
`
`
`3
`
`
`
`IPR2016-00824
`Patent 8,934,375 B2
`
`
`For PETITIONER:
`
`David Cavanaugh
`Larissa Park
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`larissa.park@wilmerhale.com
`
`
`
`Robert Hilton
`George Davis
`MCGUIREWOODS LLP
`RHilton@mcguirewoods.com
`GDavis@mcguirewoods.com
`
`
`
`Douglas Kubehl
`Kurt Pankratz
`Jennifer Tempesta
`BAKER BOTTS L.L.P.
`doug.kubehl@bakerbotts.com
`kurt.pankratz@bakerbotts.com
`jennifer.tempesta@bakerbotts.com
`
`
`
`
`
`For PATENT OWNER:
`
`Amedeo Ferraro
`Wesley Meinerding
`MARTIN & FERRARO, LLP
`aferraro@martinferraro.com
`wmeinerding@martinferraro.com
`
`
`
`4
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