`571-272-7822
`
` Paper 23
`
`
` Entered: March 5, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CLEARWIRE CORPORATION and CLEAR WIRELESS LLC
`Petitioners
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case IPR2013-00306
`Patent 5,590,403
`
`
`
`Before HOWARD B. BLANKENSHIP, JONI Y. CHANG, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Case IPR2013-00306
`Patent 5,590,403
`
`
`On March 4, 2014, a telephone conference call was held between
`respective counsel for the parties and Judges Blankenship, Chang, and
`Quinn. The parties sought authorization to file a joint motion to terminate
`the instant proceeding on the basis that the parties have reached a settlement.
`The instant inter partes review was instituted on October 22, 2013.
`Paper 12. The Board does not have before it full briefing on the issues
`raised during the trial. Moreover, the Board has not entered a final written
`decision. Generally, the Board expects that a proceeding will terminate after
`the filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). The rule governing
`settlement indicates that any agreement between the parties made in
`connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
`Based on the facts of this case, the Board authorizes the parties to file
`a joint motion to terminate the proceeding. The joint motion must include a
`brief explanation as to why termination is appropriate. The joint motion to
`terminate also must be accompanied by a true copy of the parties’
`settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b). A redacted version of the settlement agreement will not be
`accepted as a true copy of the settlement agreement.
`With respect to having the settlement agreement treated as business
`confidential information under 37 C.F.R. § 42.74(c), the parties must file the
`confidential settlement agreement electronically in the Patent Review
`Processing System (“PRPS”) as an exhibit in accordance with the
`instructions provided on the Board’s website (uploading as “Parties and
`Board Only”). The parties are directed to FAQ G2 on the Board’s website at
`
`
`
`2
`
`
`
`Case IPR2013-00306
`Patent 5,590,403
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`their settlement agreement as confidential.
`Accordingly, it is
`ORDERED that the parties are authorized to file a joint motion to
`terminate this proceeding; the due date for the joint motion is March 11,
`2014;
`
`FURTHER ORDERED that the joint motion must be accompanied by
`a true copy of the parties’ settlement agreement in connection with the
`termination of this proceeding, as required by 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(b);
`FURTHER ORDERED that the parties may file a separate paper
`requesting that the settlement agreement be treated as business confidential
`information as specified in 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that any confidential settlement agreement
`must be filed, as an exhibit, electronically in PRPS in accordance with the
`instructions provided on the Board’s website (uploading as “Parties and
`Board Only”).
`
`
`
`3
`
`
`
`Case IPR2013-00306
`Patent 5,590,403
`
`PETITIONERS:
`
`Tawni L. Wilhelm (Lead Counsel)
`Albert F. Harris III (Back-up Counsel)
`SHOOK, HARDY & BACON L.L.P.
`twilhelm@shb.com
`afharris@shb.com
`
`
`
`PATENT OWNER:
`
`John R. Kasha (Lead Counsel)
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`Craig Steven Jepson (Back-up Counsel)
`REED & SCARDINO LLP
`cjepson@reedscardino.com
`
`
`
`
`
`
`
`
`4
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