UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`CISCO SYSTEMS, INC.
`Petitioner
`v.
`
`SPHERIX INC.,
`Patent Owner
`________________
`
`Case IPR2015-00999
`Patent 7,397,763
`________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`
`1
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`CISCO SYSTEMS, INC.
`Petitioner
`v.
`
`SPHERIX INC.,
`Patent Owner
`________________
`
`Case IPR2015-00999
`Patent 7,397,763
`________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`
`1
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`
`
`IPR2015-00999
`Joint Motion to Terminate Proceedings
`
`
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, and the Board’s
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`authorization provided by email on November 25, 2015, Petitioner and Patent
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`Owner jointly request termination of this Inter Partes Review case pursuant to
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`settlement.
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`II.
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`STATEMENT OF FACTS
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`This is one of two pending IPR proceedings 1 filed by petitioner Cisco
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`Systems Inc. (“Petitioner”) against patent owner Spherix Inc. (“Patent Owner”).
`
`Effective November 23, 2015, the Patent Owner entered into an agreement with a
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`third party whereby the third party was authorized to grant, and did grant, a patent
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`license covering U.S. Pat. 7,397,763 (the subject of this proceeding) to the
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`Petitioner. See Ex. 1013 at 7. The agreement further required the Petitioner and
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`Patent Owner to jointly request termination of this proceeding. Id. at 9.
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`A decision to institute trial in this proceeding was entered on September 22,
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`2015. See Paper No. 11. Patent Owner has not taken discovery in this matter and
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`its Patent Owner Response is due December 22, 2015. See Scheduling Order,
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`Paper 12 at 6.
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`
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`1 See also Inter Partes Review Case No. IPR2015-001001.
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`
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`2
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`
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`IPR2015-00999
`Joint Motion to Terminate Proceedings
`
`A “Joint Request to File Settlement Agreement as Business Confidential
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`Information Pursuant to 35 U.S.C. § 317” is being filed concurrently with this Joint
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`Motion to Terminate in reference to sealing of the settlement agreement.
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`
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`III. ARGUMENT
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`A. Termination of This Inter Partes Review is Appropriate
`
`The statutory provision on a settlement relating to inter partes reviews
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`provides that an inter partes review “shall be terminated with respect to any
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`petitioner upon the joint request of the petitioner and the patent owner, unless the
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`Office has decided the merits of the proceeding before the request for termination
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`is filed.” 35 U.S.C. § 317(a). It also provides that, “[i]f no petitioner remains in
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`the inter partes review, the Office may terminate the review or proceed to a final
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`written decision under section 318(a).” Id.
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`Here, the Board has not decided the merits of the proceeding. Trial in this
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`proceeding was instituted just over two months ago. No depositions have
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`occurred, and Patent Owner’s Response is not due for several more weeks.
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`In other proceedings, the Board has granted joint motions to terminate the
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`proceedings when the proceeding was much further along, and the record was
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`much more fully developed than the present proceeding. The Board has granted
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`3
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`IPR2015-00999
`Joint Motion to Terminate Proceedings
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`motions to terminate after the matter had been fully briefed and ready for oral
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`argument, and even after oral argument. For example, in Apex v. Resmed, the
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`matter was fully briefed when the parties filed their joint motion to terminate.
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`Apex Medical Corp. v. Resmed Ltd., IPR2013-00512, Paper 39 at 2-3 (Sept. 12,
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`2014). There, the Board granted the motion to terminate in its entirety, noting that
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`it had not yet decided the merits. Id. In Rackspace Hosting v. Clouding IP, the
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`Board granted a motion to terminate a proceeding after the evidentiary record was
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`closed and shortly before the oral argument. Rackspace Hosting, Inc. v. Clouding
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`IP, LLC, CBM2014-00034, Paper 28 (Dec. 9, 2014), Paper 28 at 2-3 (citing Office
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`Patent Trial Practice Guide); id., Paper 22 at 2 (Nov. 18, 2014) (setting Trial
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`Hearing for December 18, 2014). In Volusion v. Versata Software, the Board
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`terminated the proceeding in its entirety even after oral argument had already been
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`conducted, noting that, “[w]hile this case is in the late stages of the trial, no final
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`written decision has been made.” Volusion Inc. v. Versata Software Inc.,
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`CBM2013-00018, Paper 52 at 2 (June 17, 2014).
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`Because the Board has not decided the merits of the present Inter Partes
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`Review Proceedings, Section 317 provides that the Inter Partes Review
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`Proceedings should be terminated with respect to Petitioner. Moreover, because
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`4
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`
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`IPR2015-00999
`Joint Motion to Terminate Proceedings
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`Cisco is the only petitioner in this inter partes review, no petitioner will remain,
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`and the Office may terminate the review in its entirety under Section 317. Because
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`this proceeding is in its early stages, termination would save significant further
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`expenditure of resources by the Board, as well as by Patent Owner, and would
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`further the purpose of IPR proceedings to provide an efficient and less costly
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`alternative forum for patent disputes (including by encouraging settlement).
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`Indeed, the Board has stated an expectation that proceedings such as these
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`will be terminated after the filing of a settlement agreement: “[t]here are strong
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`public policy reasons to favor settlement between the parties to a proceeding. …
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`The Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding. 35
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`U.S.C. 317(a), as amended….” Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,768 (Aug. 14, 2012) (emphasis added). For at least the reasons
`
`discussed below, the Board’s expectation that such proceedings should be
`
`terminated is proper and well justified here.
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`In light of the foregoing, termination of the proceedings in their entirety is
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`warranted.
`
`
`
`5
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`
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`IPR2015-00999
`Joint Motion to Terminate Proceedings
`
`
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`B.
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`Status of Related Matters
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`Contemporaneously with this filing, the Petitioner and Patent Owner are
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`requesting termination of co-pending IPR2015-01001 regarding U.S. 8,607,323.
`
`The licensing agreement between Patent Owner and the third party is
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`expected to result in the dismissal of all pending district court litigation concerning
`
`the ’763 patent. Patent Owner confirms that the ’763 patent is the subject of the
`
`following cases, all of which are expected to be dismissed:
`
`Name
`Spherix Incorporated v. Cisco
`Systems Inc.
`
`Spherix Incorporated v. Cisco
`Systems Inc.
`
`
`Number
`1-14-cv-00393
`
`District
`DED
`
`Filed
`March 28, 2014
`
`1-14-cv-00374
`
`DED
`
`March 24, 2014
`
`C. Written Settlement Agreement
`
`The parties are filing herewith a copy of a patent license agreement that
`
`grants Cisco a license to the involved patent and was entered into in contemplation
`
`of termination of this proceeding. Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c), the Parties jointly request that the true copy of the settlement agreement
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`filed concurrently herewith be treated as business confidential information, which
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`shall be kept separate from the file of the involved patent. A request is being filed
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`herewith to treat this agreement as business confidential information and to keep it
`6
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`
`
`
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`IPR2015-00999
`Joint Motion to Terminate Proceedings
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`separate from the files of the involved patent. This patent license agreement is the
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`only agreement or understanding between Cisco and Patent Owner that was made
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`in connection with, or in contemplation of, termination of this proceeding. See 37
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`C.F.R. § 42.74(b).
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`The Parties further request the Board to not make the settlement agreement
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`available to any third party, except as provided for in 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c).
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`IV. CONCLUSION
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`Wherefore, Petitioner and Patent Owner respectfully request that the Board
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`grant the parties’ Joint Motion to Terminate this proceeding in its entirety and
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`grant the request to treat the patent license agreement between the parties as
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`business confidential information.
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`Petitioner and Patent Owner are available at the Board’s convenience to
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`discuss these related matters in more detail or answer any additional questions
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`raised by this joint motion.
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`
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`7
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`
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`IPR2015-00999
`Joint Motion to Terminate Proceedings
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`Respectfully submitted,
`
`/Donald McPhail/
`Donald McPhail
`Reg. No. 35,811
`
`Lead Counsel for Patent Owner
`Spherix Inc.
`
`/David L. McCombs/
`David L. McCombs
`Reg. No. 32,271
`
`Lead Attorney for Petitioner Cisco
`Systems, Inc.
`
`
`
`Dated: December 3, 2015
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`8
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`IPR2015-00999
`Joint Motion to Terminate Proceedings
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`PETITIONER’S UPDATED EXHIBIT LIST
`
`December 3, 2015
`
`Ex. 1001 U.S. Patent No. 7,397,763 to Bradd
`
`Ex. 1002 Prosecution File History of U.S. Patent App. No. 10/034,521 (the
`parent of the ’763 patent)
`
`Ex. 1003 Prosecution File History of U.S. Patent No. 7,397,763
`
`Ex. 1004 Declaration of Dr. Oliver Ibe under 37 C.F.R. § 1.68
`
`Ex. 1005 U.S. Patent No. 6,907,004 to Ramsey et al.
`
`Ex. 1006 Cisco Media Convergence Server 7830 Data Sheet, as archived by
`the Wayback Machine on Oct. 27, 2000, available at
`https://web.archive.org/web/20001027155717/http://www.cisco.
`com/warp/public/cc/pd/mxsv/mxcvsr/prodlit/mcs78_ds.htm
`
`Ex. 1007 Scott Keagy, INTEGRATING VOICE AND DATA NETWORKS (2000),
`selected pages
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`Ex. 1008 U.S. Patent No. 7,260,060 to Abaye et al.
`
`Ex. 1009 Copyright record for Ex. 1007
`
`Ex. 1010 Dated version of Cisco Media Convergence Server 7830, Ex. 1006
`
`Ex. 1011 Declaration of Mr. Adam R. Alper in support of Motion for Pro Hac
`Vice Admission
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`Ex. 1012 Declaration of Mr. Michael W. De Vries in support of Motion for
`Pro Hac Vice Admission
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`Ex. 1013
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`Confidential Agreement
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`9
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`IPR2015-00999
`Joint Motion to Terminate Proceedings
`
`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the following document has
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`
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`been served in its entirety by filing the JOINT MOTION TO TERMINATE
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`PROCEEDINGS through the Patent Review Processing System, as well as by
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`causing the aforementioned document to be electronically mailed, pursuant to the
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`Patent Owner’s Mandatory Notices filed May 22, 2015, to the attorneys of record
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`for the Petitioner listed below:
`
`
`
`Donald McPhail
`DMcphail@cozen.com
`
`Carl B. Wischhusen
`CWischhusen@cozen.com
`
`
`
`Dated:
`
`December 3, 2015
`
`
`
`
`
`
`
`
`
`/David L. McCombs/
`David L. McCombs
`Reg. No. 32,271
`
`Lead Attorney for Petitioner Cisco
`Systems, Inc.
`
`10
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