` December 7, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVOCENT HUNTSVILLE CORPORATION, and
`LIEBERT CORPORATION,
`
`Petitioner,
`v.
`CYBER SWITCHING PATENTS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00690 (Patent 7,550,870 B2)
`Case IPR2015-00725 (Patent 7,550,870 B2)
`
`____________
`
`Before MICHAEL R. ZECHER, GLENN J. PERRY, and NEIL T.
`POWELL, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`DECISION
`Termination of the Proceeding
`37 C.F.R. § 42.72
`
`The parties have requested termination of the two inter partes reviews
`captioned above. The parties’ requests are granted.
`Cases IPR2015-00690 and IPR2015-00725 were petitioned originally
`by Avocent Huntsville Corporation (“Avocent”), Liebert Corporation
`
`
`
`IPR2015-00690 (Patent 7,550,870 B2)
`IPR2015-00725 (Patent 7,550,870 B2)
`
`(“Liebert”), Eaton Corporation, and Raritan Americas, Inc. d/b/a Raritan
`Computer, Inc. The only remaining Petitioner parties are Avocent and
`Liebert.1 A final decision has not yet been reached in either proceeding.
`The parties have filed Joint Motions2 to terminate each of the
`captioned proceedings and have requested3 to have their respective
`settlement agreements treated as business confidential information under
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties refer to true copies
`of their respective written settlement agreements, which have been filed
`separately as exhibits4 in the respective proceedings. The settlement
`agreements were filed so as to limit viewing to the parties and the Board
`only.
`
`The Joint Motions indicate that the parties have settled their disputes
`related to the U.S. Patent No. 7,550,870 B2 (“the ’870 patent”), and that the
`related matters in the Northern District of California, which were identified
`previously in the respective inter partes reviews, have been dismissed with
`prejudice or stayed pending final determination of the applicable inter partes
`reviews.
`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.”
`Although we instituted an inter partes review of claims 1–9, 11, and 12 of
`
`
`1 IPR2015-00690, Paper 15; and IPR2015-00725, Paper 15.
`2 IPR2015-00690, Paper 31; and IPR2015-00725, Paper 31.
`3 IPR2015-00690, Paper 32; and IPR2015-00725, Paper 32.
`4 IPR2015-00690, Exhibit 9999; and IPR2015-00725, Exhibit 9999.
`
`
`
`2
`
`
`
`IPR2015-00690 (Patent 7,550,870 B2)
`IPR2015-00725 (Patent 7,550,870 B2)
`
`the ’870 patent in both proceedings,5 we have not yet reached final decisions
`on the merits.
`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 a
`true copy shall be filed with the Board before termination of the trial.” As
`the parties have filed their written settlement agreement, and the co-pending
`district court cases have been or will be dismissed, we determine that it is
`appropriate to terminate these proceedings without rendering Final Written
`Decisions as to the patentability of claims 1–9, 11, and 12 of the ’870 patent.
`See 37 C.F.R. §§ 42.72, 42.73, 42.74.
`
`
`5 IPR2015-00690, Paper 16; and IPR2015-00725, Paper 16.
`
`
`
`3
`
`
`
`IPR2015-00690 (Patent 7,550,870 B2)
`IPR2015-00725 (Patent 7,550,870 B2)
`
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the parties’ Joint Requests that the settlement
`agreements be treated as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c) are GRANTED; and
`ORDERED that the parties’ Joint Motions to terminate these
`proceedings are GRANTED, and these proceedings are hereby terminated.
`
`
`
`
`For PETITIONER:
`
`Donald L. Jackson
`Wayne M. Helge
`Davidson Berquist Jackson & Gowdey, LLP
`djackson@dbjg.com
`whelge@dbjg.com
`
`
`
`For PATENT OWNER:
`
`Jing Hong Cherng
`Mount, Spelman & Fingerman, P.C.
`gcherng@mount.com
`Daniel S. Mount (pro hac vice)
`Kathryn G. Spelman (pro hac vice)
`William H. Stewart (pro hac vice)
`
`
`
`4
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