`571-272-7822
`
`
`
`Paper 15
`Entered: December 4, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`SPHERIX PORTFOLIO ACQUISITION II, INC.,
`Patent Owner.
`
`
`
`Cases
`IPR2015-00999 (Patent 7,397,763 B2)
`IPR2015-01001 (Patent 8,607,323 B2)1
`
`
`
`Before JUSTIN BUSCH, LYNNE E. PETTIGREW, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISION
`Joint Motion to Terminate
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`1 This order addresses issues that are the same in both cases. We exercise
`our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in subsequent papers.
`
`
`
`IPR2015-00999 (Patent 7,397,763 B2)
`IPR2015-01001 (Patent 8,607,323 B2)
`
`
`On December 3, 2015, Cisco Systems, Inc. (“Petitioner”) and Spherix
`
`Portfolio Acquisition II, Inc. (“Patent Owner”) filed a “Joint Motion to
`
`Terminate Proceedings” based on a settlement agreement that resolves the
`
`parties’ disputes related to the challenged patents. Paper 13.2 The parties
`
`concurrently filed a copy of the settlement agreement between Petitioner and
`
`Patent Owner (Ex. 1013) and a “Joint Request to File Agreement as
`
`Business Confidential Information Pursuant to 35 U.S.C. § 317” (Paper 14).
`
`See 37 C.F.R. § 42.74(c) (“A party to a settlement may request that the
`
`settlement be treated as business confidential information and be kept
`
`separate from the files of an involved patent or application.”).
`
`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.”
`
`These proceedings are in their early stages. For example, Patent
`
`Owner has not filed a Patent Owner Response. As a result, we have not yet
`
`decided the merits of these proceedings. Under these circumstances, we
`
`determine that it is appropriate to terminate these proceedings as to both
`
`Petitioner and Patent Owner without rendering a final written decision. See
`
`37 C.F.R. §§ 42.72, 42.74.
`
`
`
`
`
`2 Citations are to the filings in IPR2015-00999, unless otherwise noted.
`
`2
`
`
`
`IPR2015-00999 (Patent 7,397,763 B2)
`IPR2015-01001 (Patent 8,607,323 B2)
`
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that the Joint Motion to Terminate Proceedings is
`
`granted; and
`
`FURTHER ORDERED that the settlement agreements (Exhibit 1013
`
`in IPR2015-0999 and Exhibit 1046 in IPR2015-01001) be treated as
`
`business confidential information and be kept separate from the files of the
`
`involved U.S. Patent Nos. 7,397,763 B2 and 8,607,323 B2.
`
`
`
`3
`
`
`
`IPR2015-00999 (Patent 7,397,763 B2)
`IPR2015-01001 (Patent 8,607,323 B2)
`
`For PETITIONER:
`
`David L. McCombs
`Theodore M. Foster
`Michael S. Parsons
`HAYNES AND BOONE LLP
`david.mccombs.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`ipr.michael.parsons@haynesboone.com
`
`For PATENT OWNER:
`
`Donald McPhail
`Carl B. Wischhusen
`COZEN O’CONNOR
`DMcphail@cozen.com
`CWischhusen@cozen.com
`
`
`
`
`
`
`4
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