`571-272-7822
`
`
`
`
`Paper 36
`Entered: December 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`TLI COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00283
`Patent 6,038,295
`____________
`
`
`
`Before TRENTON A. WARD, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`ORDER
`Termination of the Proceeding
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`
`IPR2015-00283
`Patent 6,038,295
`
`
`On December 11, 2015, with Board authorization, the parties filed a
`joint motion to terminate this proceeding (Paper 34), along with what they
`indicated is a true copy of their written settlement agreement (Ex. 2010).
`The parties indicated in their joint motion that they have reached an
`agreement to terminate this proceeding relating to U.S. Patent No. 6,038,295
`(“the ’295 patent”). Paper 34, 3. On the same day, the parties also filed a
`joint motion requesting that the settlement agreement be treated as business
`confidential information and kept separate from the file of the ’295 patent.
`Paper 35.
`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.” We
`instituted a trial in this proceeding as to claims 17–24 of the ’295 patent
`(Paper 21) on June 1, 2015, but we have not yet decided the merits of the
`proceeding.
`Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
`understanding between the parties made in connection with, or in
`contemplation of, the termination of a proceeding shall be in writing and true
`copy shall be filed with the Board before the termination of the trial.” The
`parties have filed what they indicated is a true copy of their written
`settlement agreement, which they represented constitutes the entire
`agreement between the parties with respect to this inter partes review
`(Ex. 2010, §§ IV, XII). In view of the foregoing reasons, we determine that
`it is appropriate to terminate this proceeding without rendering a final
`
`2
`
`
`
`
`
`IPR2015-00283
`Patent 6,038,295
`
`written decision as to the patentability of claims 17–24 of the ’295 patent.
`See 37 C.F.R. §§ 42.72, 42.74.
` As requested by the parties, the settlement agreement will be treated
`as business confidential information and kept separate from the file of the
`’295 patent. 37 C.F.R. § 42.74(c).
`
`Accordingly, it is
`
`ORDERED that the joint motion to terminate the proceeding
`(Paper 34) is granted;
`FURTHER ORDERED that the parties’ joint request that the
`settlement agreement (Ex. 2010) be treated as business confidential
`information (Paper 35) is granted; and
`FURTHER ORDERED that this proceeding is hereby terminated.
`
`
`
`
`
`3
`
`PETITIONER:
`David M. Krinsky
`Aaron Maurer
`WILLIAMS & CONNOLLY LLP
`dkrinsky@wc.com
`amaurer@wc.com
`
`
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`Holly Atkinson
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
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