`571-272-7822
`
`
`
`Paper 9
`Entered: August 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T MOBILITY LLC,
`Petitioner,
`
`v.
`
`ADAPTIX, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00997
`Patent 8,934,445 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges
`
`BUI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Joint Motion to Terminate Proceeding
`37 C.F.R. §§ 42.72 & 42.74
`
`
`
`
`
`
`IPR2016-00997
`Patent 8,934,445 B2
`
`
`
`On August 4, 2016, the parties filed (1) a Joint Motion to Terminate
`
`
`
`Proceeding (Paper 8, “Mot.”), and (2) a Joint Motion to File Settlement
`
`Agreement as Business Confidential Information under 35 U.S.C. § 317 and
`
`37 C.F.R. § 42.74(c) (Paper 7).
`
`The parties indicate in their joint motion that they “have settled their
`
`dispute and have reached agreement to terminate this Inter Partes Review.”
`
`Mot. 2. The parties further indicate that they have entered into a Settlement
`
`Agreement dated July 15, 2016 (Ex. 2001) and request the Settlement
`
`Agreement (Ex. 2001) be treated as business confidential information
`
`pursuant 35 U.S.C. § 317(b).
`
`As recognized by the parties, the proceeding is still in its “preliminary
`
`proceeding” stage.1 Patent Owner has yet to file a Patent Owner Preliminary
`
`Response. The Board has yet to decide whether to institute a trial. Under
`
`the circumstances presented here, we determine that it is appropriate to
`
`terminate this preliminary proceeding with respect to both Petitioner and
`
`Patent Owner. Accordingly, we grant the parties’ joint motion to terminate.
`
`We also grant the parties’ joint request that the settlement agreement
`
`be treated as business confidential information, to be kept separate from the
`
`patent file. The parties further state that “because AT&T Mobility and
`
`Adaptix request this termination as to Petitioner AT&T Mobility, no
`
`estoppel under 35 U.S.C. § 315(e) shall attach to AT&T Mobility.” Mot. 2.
`
`We express no opinion regarding estoppel.
`
`
`
`
`1 “Preliminary proceeding” is defined as the period from the filing of a
`petition for instituting a trial to the written decision as to whether a trial will
`be instituted. See 37 C.F.R. § 42.2.
`
`2
`
`
`
`
`IPR2016-00997
`Patent 8,934,445 B2
`
`
`Accordingly, it is:
`
`
`
`
`
`ORDERED that the parties’ Joint Motion to Terminate Proceeding is
`
`granted;
`
`FURTHER ORDERED that the parties’ Joint Request to treat their
`
`Settlement Agreement (Ex. 2001) as business confidential information, to be
`
`kept separate from the patent file, under 37 C.F.R. § 42.74(c), is granted;
`
`and
`
`
`
`FURTHER ORDERED that this proceeding is terminated.
`
`3
`
`
`
`
`PETITIONER:
`
`Eliot D. Williams
`Baker Botts LLP
`Eliot.williams@bakerbotts.com
`
`
`
`PATENT OWNER:
`
`Matthew Juren
`Joseph Oldaker
`NELSON BUMGARDNER, P.C.
`matthew@nelbum.com
`ipr@nelbum.com
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