Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 13
`Entered: September 28, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMAZON.COM, INC. and AMAZON WEB SERVICES, INC.,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`Cases1
`IPR2017-00811 (Patent 7,296,295 B2)
`IPR2017-01991 (Patent 6,501,480 B1)
`
`
`
`
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Authorization to File Motions to Terminate and to Dismiss
`35 U.S.C. §§ 314 and 317 and 37 C.F.R. §§ 42.71(a) and 42.74
`
`
`1 This Order applies to each of the listed cases. The parties are not authorized to
`use a multiple case caption.
`
`
`571-272-7822
`
`
`
`
`
`Paper 13
`Entered: September 28, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMAZON.COM, INC. and AMAZON WEB SERVICES, INC.,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`Cases1
`IPR2017-00811 (Patent 7,296,295 B2)
`IPR2017-01991 (Patent 6,501,480 B1)
`
`
`
`
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Authorization to File Motions to Terminate and to Dismiss
`35 U.S.C. §§ 314 and 317 and 37 C.F.R. §§ 42.71(a) and 42.74
`
`
`1 This Order applies to each of the listed cases. The parties are not authorized to
`use a multiple case caption.
`
`
`
`IPR2017-00811 (Patent 7,296,295 B2)
`IPR2017-01991 (Patent 6,501,480 B1)
`
`
`I.
`
`BACKGROUND
`
`Broadcom Corporation (“Patent Owner”) filed a copy of a stipulation signed
`by counsel for the parties indicating that the counts of the complaint in the co-
`pending litigation regarding the patents at issue in the above-captioned proceedings
`have been dismissed with prejudice from that litigation. IPR2017-00811,
`Ex. 2001, 2 (filed Sept. 18, 2017); IPR2017-01991, Ex. 2001, 2 (filed Sept. 14,
`2017); see IPR2017-00811, Paper 6, 1 (identifying the co-pending litigation);
`IPR2017-01991, Paper 5, 1 (identifying the co-pending litigation). Further, in the
`stipulations, the parties state that:
`7.
`Defendants shall take all actions necessary to withdraw the
`petition for inter partes review in IPR2017-00811, and the parties shall
`cooperate to effect the termination of IPR2017-00811 in light of the
`parties’ agreement to resolve the claims in respect of United States
`Patent No. 7,296,295.
`8.
`Defendants shall take all actions necessary to withdraw the
`petition for inter partes review in IPR2017-01991, and the parties shall
`cooperate to effect the termination of IPR2017-01991 in light of the
`parties’ agreement to resolve the claims in respect of United States
`Patent No. 6,501,480.
`E.g., IPR2017-00811, Ex. 2001, 2–3 (emphases added).
`On September 21, 2017, Amazon.com, Inc. and Amazon Web Services, Inc.
`(collectively “Petitioner”) contacted the Board via e-mail and indicated that
`“Petitioners and Patent Owner respectfully request authorization to file a Joint
`Motion to Terminate in each of the IPR2017-00811 and IPR2017-01991
`proceedings. The parties have agreed to terminate these two proceedings and
`executed a stipulation, which the parties intend to file with the Joint Motions to
`Terminate.” On September 27, 2017, the panel and the parties’ counsel held a
`conference call to discuss the parties’ request and the status of each case before the
`Board.
`
`
`
`2
`
`
`
`IPR2017-00811 (Patent 7,296,295 B2)
`IPR2017-01991 (Patent 6,501,480 B1)
`
`
`A. IPR2017-00811
`
`Unlike IPR2017-01991, we instituted inter partes review of challenged
`claims of the patent at issue in IPR2017-00811. Although the parties’ counsel
`indicated during the conference call that they had not yet prepared an agreement
`documenting the settlement of their dispute in the inter partes review, they
`indicated they would prepare such an agreement for execution by the parties and
`would file a true copy of the agreement (as an separate Exhibit) with a Joint
`Motion to Terminate IPR2017-00811, pursuant to 35 U.S.C. § 317(a) and 37
`C.F.R. § 42.74. The Joint Motion to Terminate should update the Board
`concerning the status of any litigation or proceeding, including, but not limited to,
`proceedings in the U.S. Patent and Trademark Office, involving the subject patent,
`and advise the Board whether any litigation or proceeding involving the subject
`patent is contemplated in the foreseeable future. The Joint Motion to Terminate
`also must include a statement certifying that there are no collateral agreements or
`understandings made in connection with, or in contemplation of, the termination of
`the inter partes review. See 35 U.S.C. §317(b); 37 C.F.R. § 42.74(b). The parties
`are permitted to request that a settlement agreement be kept separate pursuant to 35
`U.S.C. §317(b) and 37 C.F.R. § 42.74(c).
`
`B. IPR2017-01991
`
`IPR2017-01991 is at the preliminary proceeding stage. Petitioner filed its
`Petition on August 21, 2017, and the deadline has not yet arrived for Patent Owner
`to file any Preliminary Response. Hence, we have not yet considered Petitioner’s
`Petition or reached any conclusions regarding its merits. Therefore, we grant the
`parties’ request to file a Joint Motion to Dismiss IPR2017-01991, pursuant to 35
`U.S.C. § 314(b) and 37 C.F.R. § 42.71(a).
`
`
`
`3
`
`
`
`IPR2017-00811 (Patent 7,296,295 B2)
`IPR2017-01991 (Patent 6,501,480 B1)
`
`
`
`II. ORDER
`
`It is therefore
`ORDERED that the parties are authorized to file a Joint Motion to
`Terminate IPR2017-00811, a true copy of any agreement settling their dispute
`regarding the patent at issue in IPR2017-00811, and a Joint Request that the
`Settlement Agreement be Treated as Business Confidential Information, pursuant
`to 35 U.S.C. § 317 and 37 C.F.R. § 42.74; and
`FURTHER ORDERED the parties are authorized to file a Joint Motion to
`Dismiss IPR2017-01991, pursuant to 35 U.S.C. § 314(b) and 37 C.F.R. § 42.71(a).
`
`PETITIONER:
`
`Joseph F. Edell
`Richard Z. Zhang
`FISCH SIGLER LLP
`Joe.edell.ipr@fischllp.com
`Richard.zhang.ipr@fischllp.com
`
`PATENT OWNER:
`
`Jason S. Angell
`Jing H. Cherng
`FREITAS ANGELL & WEINBERG LLP
`jangell@fawlaw.com
`gcherng@fawlaw.com
`
`
`
`
`
`
`
`
`4
`
`
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