`571-272-7822
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`Paper 8
`Date: June 21, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CISCO SYSTEMS, INC.,
`Petitioner,
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`v.
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`BUSHNELL HAWTHORNE, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00908
`Patent 7,310,686 B2
`____________
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`Before JOSIAH C. COCKS, JUSTIN T. ARBES, and JON M.
`JURGOVAN, Administrative Patent Judges.
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`COCKS, Administrative Patent Judge.
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`TERMINATION
`Dismissing the Petition
`37 C.F.R. §§ 42.5(a), 42.71(a)
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`IPR2019-00908
`Patent 7,310,686 B2
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`On May 30, 2019, Petitioner, Cisco Systems, Inc., (“Cisco”) filed a
`“Motion to Terminate Inter Partes Review of U.S. Patent No. 7,310,686”
`(“the ’686 patent”). Paper 4 (“Motion” or “Mot.”).1 Cisco also filed a
`“Notice of Stipulated Dismissal Pursuant to F.R.C.P. 41(a)(1)(A)(ii).” Ex.
`1021. The Motion states that “Patent Owner Bushnell Hawthorne LLC
`[‘Bushnell’] does not oppose, and in fact agrees to, this motion.” Mot. 2.
`Bushnell further has filed a “Stipulation for Motion to Terminate” stating
`that it “agrees to the termination” of this proceeding. Paper 7. The Motion
`also states that “other than Exhibit 1021, there are no further agreements
`between the parties concerning the resolution of the dispute of the
`’686 Patent.” Mot. 2. Exhibit 1021 states the following:
`Plaintiff Bushnell Hawthorne, LLC, by counsel, hereby gives
`notice of the stipulated dismissal of Count I of its Amended
`Complaint asserting infringement of U.S. Patent No. 7,310,686
`(the “’686 Patent”) WITH PREJUDICE.
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`Defendant Cisco Systems, Inc. (“Cisco”) hereby gives
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`notice of the stipulated dismissal of its First Counterclaim
`seeking a declaration of non-infringement of the’686 Patent and
`its Second Counter claim asserting invalidity of claims 1–41 of
`the ‘686 Patent WITH PREJUDICE except that Cisco’s
`dismissal is WITHOUT PREJUDICE to assert substantially the
`same or similar counterclaims in the event a future claim of
`infringement of the ’686 Patent is asserted against Cisco or a
`Cisco customer, partner or reseller.
`Ex. 1021, 1.
`We have not yet determined whether to institute trial in this
`proceeding. Thus, this proceeding is in its initial stages. The Motion states
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`1 The filings were authorized in e-mail correspondence from Board
`personnel on May 21, 2019.
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`2
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`IPR2019-00908
`Patent 7,310,686 B2
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`that “the parties resolved all of their disputes concerning the ’686 Patent”
`and the district court granted the stipulated dismissal involving the ’686
`patent on April 29, 2019. Mot. 2. Under the circumstances present here, we
`determine that it is appropriate to dismiss the petition. See 37 C.F.R.
`§§ 42.5(a), 42.71(a).
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`It is
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`ORDERED that Cisco’s “Motion to Terminate Inter Partes Review of
`U.S. Patent No. 7,310,686” (Paper 4) is granted; and
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`FURTHER ORDERED that, as a result of granting Cisco’s Motion,
`the Petition for Inter Partes Review of the above-referenced patent is
`dismissed.
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`3
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`IPR2019-00908
`Patent 7,310,686 B2
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`PETITIONER:
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`Daniel McDonald
`dmcdonald@merchantgould.com
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`Jeffrey Blake
`jblake@merchantgould.com
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`PATENT OWNER:
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`George Schooff
`schooff@butzel.com
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`4
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