`Entered: January 17, 2017
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`HCC INSURANCE HOLDINGS, INC.,
`
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01431
`Patent 7,949,752 B2
`_______________
`
`
`
`Before MICHAEL W. KIM, PETER P. CHEN, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`ORDER
`Dismissing the Petition
`37 C.F.R. §§ 42.5(a), 42.71(a)
`
`
`
`
`
`
`
`IPR2016-01431
`Patent 7,949,752 B2
`
`
`On January 13, 2017, pursuant to Board authorization, Petitioner HCC
`
`Insurance Holdings Inc. filed a Motion to Dismiss Inter Partes Review.
`
`Paper 7. With the Motion, Petitioner filed a copy of an order dismissing
`
`with prejudice from the related district court litigation, the parties’ claims
`
`and counterclaims relating to Patent No. 7,949,752 that is challenged herein.
`
`Ex. 1007. In particular, the district court stated:
`
`[T]he claims against [Petitioner] HCC relating to the ’752 Patent
`and the counterclaims against [Patent Owner] IV relating to the
`’752 Patent are dismissed with prejudice, with each party to bear
`its own costs and attorneys’ fees.
`
`Ex. 1007, 2.
`
`This Inter Partes Review proceeding is in its initial stages; the Board
`
`has not yet decided the merits of the Petition. Patent Owner, having
`
`dismissed with prejudice its allegations in the related district court litigation,
`
`has indicated that it does not oppose Petitioner’s motion. Paper 7, 2. Under
`
`these circumstances, we determine that it is appropriate to dismiss the
`
`petition and decline to institute trial. See 35 U.S.C. § 314; 37 C.F.R. §§
`
`42.5(a), 42.71(a).
`
`This paper does not constitute a final written decision pursuant to 35
`
`U.S.C. § 318(a).
`
`Accordingly, based on the foregoing, it is
`
`ORDERED that the Motion to Dismiss (Paper 7) is granted;
`
`FURTHER ORDERED that the Petition is dismissed; and
`
`FURTHER ORDERED that no trial is instituted.
`
`
`
`
`
`.
`
`2
`
`
`
`IPR2016-01431
`Patent 7,949,752 B2
`
`For PETITIONER:
`
`Nate Rees
`nate.rees@nortonrosefulbright.com
`
`William Braxdale
`allan.braxdale@nortonrosefulbright.com
`
`Eric Hall
`eric.hall@nortonrosefulbright.com
`
`
`
`For PATENT OWNER:
`
`Lori Gordon
`lgordon-ptab@skgf.com
`
`Byron Pickard
`bpickard@skgf.com
`
`James Hietala
`jhietala@intven.com
`
`Tim Seeley
`tims@intven.com
`
`
`
`
`
`3
`
`
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