`Tel: 571-272-7822
`
`
`
`
`Paper 20
`Entered: May 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`AT&T MOBILITY LLC,
`Petitioner,
`
`v.
`
`SOLOCRON MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-003421
`Patent 6,496,692 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, JACQUELINE W. BONILLA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`JUDGMENT
`Termination of Proceeding
`35 U.S.C. § 317
`
`
`
`1 This order addresses the same issue in the inter partes reviews listed in the
`Appendix. Therefore, we issue one order to be filed in all of the cases. The
`parties, however, are not authorized to use this style of filing in subsequent papers,
`without prior authorization.
`
`
`
`IPR2015-00342
`Patent 6,496,692 B1
`
`
`On May 14, 2015, we terminated each of the proceedings identified in the
`
`Appendix (“these proceedings”) with respect to Cellco Partnership d/b/a Verizon
`
`Wireless, one of two parties previously designated as a Petitioner. Paper 17. On
`
`May 20, 2015, the parties moved for termination of these proceedings pursuant to
`
`35 U.S.C. § 3172 with respect to all parties, representing that the only remaining
`
`Petitioner, AT&T Mobility LLC, and Patent Owner “have settled their dispute,
`
`including reaching agreement to terminate [these] inter partes review[s] with
`
`respect to AT&T.” Paper 18.
`
`With their motion to terminate, the parties filed a copy of a joint stipulated
`
`motion to dismiss the related district-court matter with prejudice to Petitioner. Ex.
`
`1040. The parties also filed a copy of what they represent is a “true and correct
`
`copy” of their written agreement in accordance with 35 U.S.C. § 317(b). Ex. 1041.
`
`The parties request that the agreement be treated as business confidential
`
`information under 35 U.S.C. § 317(b).3 Paper 19.
`
`Each of these proceedings is in an early stage and no decision whether to
`
`institute inter partes reviews has been made. Under these circumstances, we
`
`determine that it is appropriate to terminate these proceedings. The outstanding
`
`order of May 5, 2015 (Paper 11) accordingly is moot.
`
`
`
`It is
`
`ORDERED that the Board’s order of May 5, 2015 (Paper 11) is vacated;
`
`
`2 The statute specifically addresses settlement after institution of an inter partes
`review. Similar considerations apply when parties settle before a decision on
`institution.
`3 The motion’s caption refers correctly to 35 U.S.C. § 317(b), but the body of the
`motion refers incorrectly to 35 U.S.C. § 327(b). The error is harmless.
`
`
`
`IPR2015-00342
`Patent 6,496,692 B1
`
`
`FURTHER ORDERED that the joint motions to terminate the proceedings
`
`identified in the Appendix are granted with respect to all parties; and
`
`FURTHER ORDERED that the joint requests that the settlement agreement
`
`be treated as business confidential information and be kept separate from the file of
`
`the involved patents under the provisions of 35 U.S.C. § 317(b), i.e. to be made
`
`available only to Federal Government agencies on written request, or to any person
`
`on a showing of good cause, are granted.
`
`
`
`
`
`
`
`IPR2015-00342
`Patent 6,496,692 B1
`
`
`
`FOR PETITIONER:
`
`Kevin Anderson
`kanderson@wileyrein.com
`
`Floyd Chapman
`fchapman@wileyrein.com
`
`Scott Felder
`sfelder@wileyrein.com
`
`Theodore Stevenson, III
`tstevenson@mckoolsmith.com
`
`Scott Hejny
`shejny@mckoolsmith.com
`
`Nicholas Matthews
`nmathews@mckoolsmith.com
`
`FOR PATENT OWNER:
`
`Kenneth Weatherwax
`weatherwax@lowensteinweatherwax.com
`
`Patrick Maloney
`maloney@lowensteinweatherwax.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00342
`Patent 6,496,692 B1
`
`
`APPENDIX
`
`U.S. Patent No.
`
`Inter Partes Review
`
`6,496,692 B1
`
`IPR2015-00342
`
`7,319,866 B2
`
`7,257,395 B2
`
`7,295,864 B2
`
`8,594,651 B2
`
`7,742,759 B2
`
`IPR2015-00349
`IPR2015-00376
`IPR2015-00350
`IPR2015-00391
`IPR2015-00392
`IPR2015-00364
`IPR2015-00380
`IPR2015-00383
`IPR2015-00387
`IPR2015-00388
`IPR2015-00389
`IPR2015-00390
`
`
`
`
`
`
`
`
`
`
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`
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`
`
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