Capella Photonics, Inc.

Patent Trials and Appeals Board

Jun 21, 2021

IPR2021-00290 (P.T.A.B. Jun. 21, 2021)

Trials@uspto.gov Paper 12
Tel: 571-272-7822 Entered: June 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.,
Petitioner,

v.

CAPELLA PHOTONICS, INC.,
Patent Owner.
____________

IPR2021-00290
Patent RE47,905 E
____________

Before JOSIAH C. COCKS, JAMES A. TARTAL, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2021-00290
Patent RE47,905 E

2
After receiving authorization from the Board, Cisco Systems, Inc.
(“Petitioner”) and Capella Photonics, Inc. (“Patent Owner”) filed a joint
motion to withdraw the Petition and terminate this proceeding under
35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 11. The parties also filed a
copy of a settlement agreement titled “Agreement and Covenant Not to
Sue.” Ex. 2008. In addition, the parties filed a joint request that the
settlement agreement be treated as business confidential information and be
kept separate under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 10.
The parties represent that they have entered into a settlement
agreement and have resolved their dispute “both in this proceeding and in
the related district court litigation.” Paper 11, 1–2. The parties also
represent that Exhibit 2008 is “a true copy of any agreement or
understanding” between the parties “made in connection with, or in
contemplation of, the withdrawal of the Petition” and that “[t]here are no
collateral agreements or understandings made in connection with, or in
contemplation of, the termination of this proceeding.” Id. at 1. In addition,
the parties represent that “terminating the proceeding now would thus serve
the interests of judicial economy as well as the mutual interest of the
parties.” Id. at 2.
This proceeding has not progressed very far. Petitioner filed the
Petition on December 14, 2020. Patent Owner filed a Preliminary Response
on March 22, 2021. The Board has not yet decided whether to institute an
inter partes review. Terminating this proceeding will save the Board
administrative and judicial resources, e.g., in conducting an oral argument
and issuing a final written decision to decide the patentability issues raised
in the Petition. Further, “[t]here are strong public policy reasons to favor
IPR2021-00290
Patent RE47,905 E

3
settlement between the parties to a proceeding.” Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
Under these circumstances, we determine that it is appropriate to
terminate this proceeding. Further, after reviewing the parties’ settlement
agreement (Exhibit 2008), we find that it contains confidential business
information regarding the terms of settlement. We determine that it is
appropriate to treat the parties’ settlement agreement (Exhibit 2008) as
business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c).
ORDER
Accordingly, it is
ORDERED that the parties’ joint motion to withdraw the Petition and
terminate this proceeding is granted;
FURTHER ORDERED that this proceeding is terminated as to all
parties; and
FURTHER ORDERED that, as was requested timely by the parties
(Paper 10), the settlement agreement (Exhibit 2008) be treated as business
confidential information and be kept separate from the file of U.S. Patent
No. RE47,905 E and made available only under the provisions of 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c).

IPR2021-00290
Patent RE47,905 E

4
PETITIONER:

Theodore M. Foster
David L. McCombs
Gregory P. Huh
Calmann Clements
HAYNES AND BOONE, LLP
ipr.theo.foster@haynesboone.com
david.mccombs.ipr@haynesboone.com
gregory.huh.ipr@haynesboone.com
calmann.clements.ipr@haynesboone.com

PATENT OWNER:

Jason D. Eisenberg
Robert Greene Sterne
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jasone-PTAB@sternekessler.com
rsterne-PTAB@sternekessler.com