Axis Communications, Inc.v.Canatelo, LLC

Patent Trial and Appeal Board

Jul 15, 2014

10268827 (P.T.A.B. Jul. 15, 2014)

Trials@uspto.gov Paper 11
571-272-7822 Entered: July 15, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

AXIS COMMUNICATIONS, INC. and AXIS COMMUNICATIONS AB,
Petitioner,
v.
CANATELO, LLC,
Patent Owner.

_______________

Case IPR2014-00394 (Patent 6,476,858 B1)
Case IPR2014-00396 (Patent 7,310,111 B1)
_______________

Before NEIL T. POWELL, MIRIAM L. QUINN, and STACEY G. WHITE,
Administrative Patent Judges.

QUINN, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.72

IPR2014-00394, IPR2014-00396
Patents 6,476,858 B1, 7,310,111 B1

2
On June 30, 2014, the parties filed a joint motion to terminate the
instant proceedings pursuant to a settlement agreement. IPR2014-00394,
Paper 10; IPR2014-00396, Paper 10.1 The parties also filed a true copy of
their written settlement agreement, made in connection with the termination
of the instant proceedings, in accordance with 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(b). Ex. 1. Additionally, the parties submitted a joint
motion to have their settlement agreement treated as confidential business
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 9.
The instant proceedings are in the preliminary stage. The Board has
not determined whether trial will be instituted in the instant request for inter
partes review of US Patent Nos. 6,476,858 and 7,310,111 (“the challenged
patents”).
In their joint motion to terminate, the parties indicate that they have
settled their dispute concerning the challenged patents, and the parties agree
that the instant proceedings should be terminated as to both parties because
the Board has not decided the merits of the proceedings. Paper 10, 1.
Petitioner does not appear to be the sole defendant in the related litigation.
Nevertheless, Petitioner asserts that it will not participate further in these
proceedings, even if it is not terminated with respect to Petitioner. Id. at 2.
The parties submit that termination is appropriate because Petitioner
and Patent Owner are jointly requesting termination. Id. Neither Petitioner
nor Patent Owner requested a conference call with the Board to request
authorization to file either the joint motion for termination or the joint
motion to keep the settlement agreement confidential pursuant to the

1 The filings in each of these proceedings are identical, and, therefore, we
refer from here on to the filings in case IPR2014-00394.
IPR2014-00394, IPR2014-00396
Patents 6,476,858 B1, 7,310,111 B1

3
Board’s procedures. See 37 C.F.R. § 42.20(b). We admonish the parties
that the Board requires prior approval to file a motion to terminate and a
motion to maintain the settlement agreement confidential. That approval
process not only provides the Board with information regarding the status of
an ongoing case to which resources are allocated, but also notifies the
interested public that the case may be concluded if a motion for termination
is granted. The failure to seek authorization to file a motion may result in
the unauthorized filing being expunged.
In this case, the proper procedure was not followed. The panel notes,
however, that in the past ten business days since the filing of the motions,
we have not been made aware of substantial public interest or other district-
court-case activity that weighs in favor of either making a determination of
whether to institute trial or expunging the unauthorized motions.
Upon consideration of the requests before us, the early juncture of the
proceeding, and the interests of justice, terminating the instant proceedings
with regard to both Petitioner and Patent Owner promotes efficiency and
minimizes unnecessary costs. Based on the facts of this case, it is
appropriate to enter judgment.2 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
Accordingly, it is:
ORDERED that the joint motions to terminate IPR2014-00394 and
IPR2014-00396 are granted;
FURTHER ORDERED that the instant proceedings are hereby
terminated as to all parties, including Petitioner and Patent Owner; and

2 A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
IPR2014-00394, IPR2014-00396
Patents 6,476,858 B1, 7,310,111 B1

4
FURTHER ORDERED that the parties’ joint requests that the
settlement agreement be treated as business confidential information kept
separate from the patent file, and made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are
granted.

IPR2014-00394, IPR2014-00396
Patents 6,476,858 B1, 7,310,111 B1

5
PETITIONER:

Anthony S. Volpe, Registration No. 28,377
Michael F. Snyder, Registration No. 58,347
Volpe and Koenig, P.C.
United Plaza
30 South 17th Street
Philadelphia, PA 19103-4009
Telephone: (215) 568-6400
Facsimile: (215) 568-6499
Email: avolpe@vklaw.com
Email: msynder@vklaw.com

PATENT OWNER:

Eugenio Torres-Oyola
Victor Rodriguez-Reyes
Jose Medina
FERRAIUOLI LLC
221 Plaza 5th Floor
221 Ponce de León Ave.
San Juan, Puerto Rico 00917
etorres@ferraiuoli.com
vrodriguezreyes@ferraiuoli.com
jmedina@ferraiuoli.com