Patent No. 8,075,338
`IPR2016-01569
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________
`
`CORNING OPTICAL COMMUNICATIONS RF LLC, CORNING
`INCORPORATED, AND CORNING OPTICAL COMMUNICATIONS LLC,
`Petitioners,
`
`v.
`
`PPC BROADBAND, INC.,
`Patent Owner.
`__________
`
`Case IPR2016-01569
`Patent 8,075,338
`__________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`IPR2016-01569
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________
`
`CORNING OPTICAL COMMUNICATIONS RF LLC, CORNING
`INCORPORATED, AND CORNING OPTICAL COMMUNICATIONS LLC,
`Petitioners,
`
`v.
`
`PPC BROADBAND, INC.,
`Patent Owner.
`__________
`
`Case IPR2016-01569
`Patent 8,075,338
`__________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`Patent No. 8,075,338
`IPR2016-01569
`Pursuant to 35 U.S.C. § 317(a), Patent Owner, PPC Broadband, Inc.
`
`(“PPC”), and Petitioners, Corning Optical Communications RF LLC, Corning
`
`Incorporated, and Corning Optical Communications LLC, jointly move to
`
`terminate this inter partes review (“IPR”) of U.S. Patent No. 8,075,338 (“’338
`
`Patent”) due to settlement. Authorization for this motion was granted by the Board
`
`in an email dated January 5, 2017.
`
`I.
`
`BRIEF STATEMENT OF WHY TERMINATION IS APPROPRIATE
`
`Termination of this IPR is appropriate because the parties have settled their
`
`dispute concerning the ‘338 Patent (and other patents) in a confidential Settlement
`
`Agreement. (Exhibit 2031.)1 The Settlement Agreement is executed by Patent
`
`Owner and Petitioner Corning Optical Communications RF LLC, and requires that
`
`the parties jointly request termination of this IPR. (Exhibit 2031 ¶ 2.3.2.)
`
`Petitioners Corning Incorporated and Corning Optical Communications LLC agree
`
`to the termination of this IPR pursuant to the Settlement Agreement.
`
`1 As authorized by the Board in its January 5, 2017 email, the parties have
`
`concurrently filed a Joint Request to Treat Settlement Agreement as Business
`
`Confidential Information Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R § 42.74(c).
`
`The Settlement Agreement has been filed with the Board using the Patent Trial and
`
`Appeal Board’s End to End (E2E) System with access provided to the “Parties and
`
`Board only.”
`
`1
`
`
`
`Patent No. 8,075,338
`IPR2016-01569
`Termination of this IPR is also appropriate since the proceeding is at an
`
`early stage and has not been instituted. Petitioners filed their petition for IPR on
`
`August 9, 2016. Patent Owner timely filed its Preliminary Patent Owner Response
`
`on November 17, 2016. The Board has yet to issue its decision on whether to
`
`institute the proceeding, which would be due on February 17, 2017.
`
`II.
`
`STATUS OF LITIGATION PROCEEDING(S) INVOLVING THE ‘338
`PATENT
`
`The ‘338 Patent was involved in the following pending litigation between
`
`the parties: PPC Broadband, Inc. v. Corning Optical Communications RF, LLC,
`
`Case No. 5:16-00162 (N.D.N.Y.). Pursuant to the Settlement Agreement (Exhibit
`
`2031 ¶¶ 1.5, 2.3.1), all claims in this litigation involving the ‘338 Patent have been
`
`dismissed with prejudice as ordered by the Court on January 3, 2017. (Exhibit
`
`2032.)
`
`The ‘338 Patent is not involved in any other litigation. As requested by the
`
`Board, the parties also confirm that no other litigation involving the ‘338 Patent is
`
`contemplated in the foreseeable future.
`
`III.
`
`STATUS OF U.S. PATENT AND TRADEMARK OFFICE
`PROCEEDINGS INVOLVING THE ‘338 PATENT
`The ‘338 Patent is also being challenged by Petitioners in Inter Partes
`
`Review Case IPR2016-01573. The parties are concurrently filing a joint motion to
`
`terminate this related proceeding.
`
`2
`
`
`
`Patent No. 8,075,338
`IPR2016-01569
`The ‘338 Patent is not involved in any other U.S. Patent and Trademark
`
`Office proceeding. As requested by the Board, the parties also confirm that no
`
`other U.S. Patent and Trademark Office proceeding involving the ‘338 Patent is
`
`contemplated in the foreseeable future.
`
`IV. THE SETTLEMENT AGREEMENT
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Settlement
`
`Agreement (Exhibit 2031) is in writing and a true copy has been filed with the
`
`Board using the Patent Trial and Appeal Board’s End to End (E2E) System. The
`
`parties certify that there are no other collateral agreements referred to in the
`
`Settlement Agreement or understandings made in connection with, or in
`
`contemplation of, the termination of this IPR.
`
`Date: January 12, 2017
`
`Respectfully submitted,
`
`/ Denis J. Sullivan /
`Denis J. Sullivan (Reg. No. 47,980)
`BARCLAY DAMON, LLP
`Barclay Damon Tower
`125 East Jefferson Street
`Syracuse, NY 13202
`Tel.: (315) 425-2700
`dsullivan@barlcaydamon.com
`Attorneys for Patent Owner
`
`/ Todd R. Walters /
`Todd R. Walters, Esq. (Reg. No. 34,040)
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Tel.: (703) 836-6620
`todd.walters@bipc.com
`
`3
`
`
`
`Patent No. 8,075,338
`Patent No. 8,075,338
`IPR2016-01569
`
`IPR2016—01569
`
`Attorneys for Petitioners
`Attorneys for Petitioners
`
`4
`
`
`
`Patent No. 8,075,338
`IPR2016-01569
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that, on January 12,
`2017, the JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35
`U.S.C. § 317(a) along with any exhibits cited therein, were electronically filed
`through the Patent Trial and Appeal Board’s End to End (E2E) System, and were
`served via electronic mail in their entirety on the following:
`
`Todd R. Walters, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Tel.: (703) 836-6620
`todd.walters@bipc.com
`
`/ Denis J. Sullivan /
`Denis J. Sullivan (Reg. No. 47,980)
`BARCLAY DAMON, LLP
`Barclay Damon Tower
`125 East Jefferson Street
`Syracuse, NY 13202
`Tel.: (315) 425-2700
`dsullivan@barlcaydamon.com
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