`Tel: 571-272-7822
`
`
`
`
`Paper 17
`Entered: May 14, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AT&T MOBILITY LLC and
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS,
`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.
`
`DECISION
`Joint Motion to Terminate
`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 12, 2015, the parties requested that each of the proceedings
`identified in the Appendix (“these proceedings”) be terminated with respect to
`Cellco Partnership d/b/a Verizon Wireless (“Verizon Wireless”) pursuant to 35
`U.S.C. § 317(a). Paper 13. The parties represent that “Verizon Wireless and
`[Patent Owner] have settled their dispute, including reaching agreement to
`terminate [these] inter partes review[s] with respect to Verizon Wireless.” Id. The
`parties previously represented in an email communication to the Board that AT&T
`Mobility LLC (“AT&T Mobility”) and Patent Owner were in the process of
`finalizing a settlement agreement, but no motion to terminate the proceedings with
`respect to AT&T Mobility has been filed in any of these proceedings.
`With their motion to terminate, Verizon Wireless and Patent Owner filed a
`copy of a joint stipulated motion to dismiss the related district court matter with
`prejudice to Verizon Wireless and Verizon Communications Inc., together with a
`copy of the district-court order granting the motion. Paper 15. Verizon Wireless
`and Patent Owner 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). Paper 16.
`The parties request that the agreement be treated as business confidential
`information under 35 U.S.C. § 317(b).2 Paper 14.
`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 as to Verizon
`Wireless. The proceedings are not terminated with respect to AT&T, and
`termination with respect to Verizon Wireless does not toll the time for AT&T to
`
`2 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
`
`submit a brief in response to Patent Owner’s Preliminary Responses as authorized
`in the order of May 5, 2015 (Paper 11).
`Accordingly, it is
`ORDERED that the joint motions to terminate the proceedings identified in
`the Appendix with respect to Verizon Wireless are granted;
`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;
`FURTHER ORDERED that each of the proceedings identified in the
`Appendix will continue with AT&T as the sole named petitioner.
`
`
`
`
`
`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
`
`
`
`
`U.S. Patent No.
`6,496,692 B1
`7,319,866 B2
`
`7,257,395 B2
`
`7,295,864 B2
`
`8,594,651 B2
`
`7,742,759 B2
`
`APPENDIX
`Inter Partes Review
`IPR2015-00342
`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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