Canon Inc.

Patent Trials and Appeals Board

Jul 22, 2020

IPR2020-00866 (P.T.A.B. Jul. 22, 2020)

Trials@uspto.gov Paper 8
571-272-7822 Entered: July 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
AVIGILON USA CORPORATION AND AVIGILON CORPORATION,
Petitioner,
v.
CANON INC.,
Patent Owner.
_______________

IPR2020-00656
IPR2020-00866
Patent 10,135,952 B21
_______________

Before LYNNE E. PETTIGREW, BART A. GERSTENBLITH, and
JASON W. MELVIN, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

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

1 This Decision addresses issues that are the same in both proceedings. We
exercise our discretion to issue one Decision to be entered in each
proceeding.
IPR2020-00656
IPR2020-00866
Patent 10,135,952 B2

2

Petitioner and Patent Owner (collectively, “the parties”) have
requested that these proceedings be terminated pursuant to a settlement. The
Board authorized the parties to file a joint motion to terminate the
proceedings on July 13, 2020.
On July 14, 2020, pursuant to 37 C.F.R. § 42.74 and
35 U.S.C. § 317(b), the parties submitted joint motions to terminate each of
the proceedings (collectively, “Joint Motions”) (Paper 72) and joint requests
to file a Settlement Agreement as business confidential information and to
be kept separate from the patent file (collectively, “Joint Requests”)
(Paper 83), along with copies of the written Settlement Agreement
(Ex. 10094).
In the Joint Motions, the parties represent that they have reached an
agreement to jointly seek termination of these proceedings and that the filed
copies of the Settlement Agreement are true and complete copies. Paper 7,
1–2. The parties further represent that their Settlement Agreement resolves
all currently pending Patent Office and district court proceedings between
the parties involving the patent at issue. Id. at 3–4.

2 For convenience, we cite to Papers filed in IPR2020-00656. The parties
submitted a similar Joint Motion in IPR2020-00866 (Paper 6).
3 The parties submitted a similar Joint Request regarding the Settlement
Agreement in IPR2020-00866 (Paper 7).
4 For convenience, we cite to Exhibits filed in IPR2020-00656. The parties
also submitted a copy of the Settlement Agreement in IPR2020-00866
(Ex. 1108). We note that the Joint Motion in IPR2020-00656 incorrectly
refers to the exhibit number of the Settlement Agreement as “3001.”
Paper 7, 1.
IPR2020-00656
IPR2020-00866
Patent 10,135,952 B2

3

These proceedings are at an early stage, as we have not yet decided
whether to institute a trial in either of these proceedings. In view of the
early stage of these proceedings and the settlement between the parties, we
determine that good cause exists to terminate these proceedings with respect
to the parties.
Additionally, upon review of the Joint Requests that the Settlement
Agreement be treated as business confidential information and be kept
separate from the file of the patent involved in these proceedings, we
determine that good cause exists to treat the Settlement Agreement between
Petitioner and Patent Owner as business confidential information pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Therefore, the Joint Motions and the Joint Requests are granted.
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
Accordingly, it is:
ORDERED that the Joint Motions (IPR2020-00656, Paper 7;
IPR2020-00866, Paper 6) to terminate these proceedings are granted, and
that IPR2020-00656 and IPR2020-00866 are terminated with respect to both
Petitioner and Patent Owner; and
FURTHER ORDERED that the Joint Requests (IPR2020-00656,
Paper 8; IPR2020-00866, Paper 7) that the Settlement Agreement (IPR2020-
00656, Ex. 1009; IPR2020-00866, Ex. 1108) be treated as business
confidential information and be kept separate from the file of the involved
patent (U.S. Patent No. 10,135,952 B2) under the provisions of
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are granted.
IPR2020-00656
IPR2020-00866
Patent 10,135,952 B2

4

PETITIONER:

Michael Dokhanchy
KIRKLAND & ELLIS LLP
reza.dokhanchy@kirkland.com

PATENT OWNER:

Joseph A. Calvaruso
Richard F. Martinelli
ORRICK, HERRINGTON & SUTCLIFFE LLP
jvcptabdocket@orrick.com
rfmptabdocket@orrick.com