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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 SYSEMS, INC.
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`Petitioner,
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`v.
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`BUSHNELL HAWTHORNE, LLC,
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`Patent Owner.
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`____________
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`Case No.: IPR2019-00909
`U.S. Patent No. 7,310,686
`____________
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`MOTION TO TERMINATE INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,310,686
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.72, Petitioner Cisco Systems,
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`Inc. requests termination of Inter Partes Review No. IPR2019-00909, which relates
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`to claims of U.S. Patent No. 7,310,686 (“the ’686 Patent”). Patent Owner Bushnell
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`Hawthorne LLC does not oppose, and in fact agrees to, this motion.
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`The ’686 Patent was asserted by Patent Owner against Petitioner in the
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`litigation styled as Bushnell Hawthorne, LLC v. Cisco Sys., Inc., Civ. Act. No. 1:18-
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`cv-760-TSE-MSN (E.D. VA.), filed on August 21, 2018. Petitioner subsequently
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`filed the petition to institute this IPR proceeding on April 3, 2019. Paper 1. After
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`the petition was filed, the parties resolved all of their disputes concerning the ’686
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`Patent. More specifically, the parties agreed to dismiss the portion of the ongoing
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`litigation relating to the ’686 Patent. A copy of the dismissal has been filed as
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`Exhibit 1021 in compliance with 37 C.F.R. § 42.74(b). Petitioner states that, other
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`than Exhibit 1021, there are no further agreements between the parties concerning
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`the resolution of the dispute over the ’686 Patent.
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`Termination of this IPR is appropriate as the Board has not yet “decided the
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`merits of the proceeding.” See, e.g., Official Trial Practice Guide, 77 Fed. Reg.
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`48756, 48768 (Aug. 14, 2012). The parties filed the motion to dismiss the ’686
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`Patent from the pending litigation on April 18, 2019, which the district court granted
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`on Aril 29, 2019. See EX1021. Petitioner sent an email to the Board requesting
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`permission to file this motion on April 19, 2019 – sixteen days after the petition in
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`this proceeding was filed. In response to that request, the Board authorized the
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`instant motion on May 21, 2019. Patent Owner has not filed a Patent Owner
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`Preliminary Response, as the deadline for that paper is July 9, 2019. Thus, this
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`proceeding is in its early stages, and termination is proper.
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`For the foregoing reasons, Petitioner requests that the Board terminate this
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`Inter Partes Review proceeding.
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`Respectfully submitted,
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`Date: May 30, 2019
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`s/Daniel W. McDonald
`Daniel W. McDonald
`Counsel for Petitioner
`Registration No. 32,044
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. §§ 42.6, that service
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`of the foregoing MOTION TO TERMINATE INTER PARTES REVIEW OF U.S.
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`PATENT NO. 7,310,686 was served via email upon the counsel identified below:
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`Thomas Bick
`Brian S. Seal
`BUTZEL LONG, P.C.
`1909 K Street, NW, Suite 500
`Washington, D.C. 20006
`bick@butzel.com
`seal@butzel.com
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`Mitchell Zajac
`BUTZEL LONG, P.C.
`150 West Jefferson Avenue
`Detroit, MI 48226
`zajac@butzel.com
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`Charles B. Molster, III
`2141 Wisconsin Avenue, N.W., Suite M
`Washington, D.C. 20007
`cmomlster@molsterlaw.com
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`May 30, 2019
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`s/Daniel W, McDonald
`Daniel W. McDonald
`Counsel for Petitioner
`Registration No. 32,044
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