Infinera, Corp.v.Cheetah Optics, Inc.

Patent Trial and Appeal Board

Dec 4, 2013

10170326 (P.T.A.B. Dec. 4, 2013)

Trials@uspto.gov Paper 15
571-272-7822 Entered: December 4, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INFINERA, CORP.
Petitioner

v.

CHEETAH OPTICS, INC.
Patent Owner
____________

Case IPR2013-00339
Patent 6,888,661
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and MIRIAM L. QUINN,
Administrative Patent Judges.

TURNER, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.73

Case IPR2013-00339
Patent 6,888,661
2
On November 24, 2013, the parties filed a joint motion to terminate
(“Motion,” Paper 13) with respect to this inter partes review. With the joint
motion, the parties filed a copy of their written settlement agreement (Ex.
2001) covering Patent 6,888,661 involved in this proceeding. The parties
also filed, on November 24, 2013, a joint request 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 14.
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
this chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.” The
requirement for terminating review with respect to Petitioner (“Infinera”) is
met.
Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes
review, the Office may terminate the review or proceed to a final written
decision under section 318(a).” Infinera is the sole petitioner in this review.
The Board has discretion to terminate this review with respect to the patent
owner (“Cheetah”). The Board notes that no decision on institution of this
proceeding has been made, and that there are no outstanding motions in this
proceeding.
The Board acknowledges that the written settlement agreement (Ex.
2001) appears to be a true copy, and that the parties seek settlement of the
actions between them, specifically including the instant proceeding,
IPR2013-00339, in the matters to be settled.
Case IPR2013-00339
Patent 6,888,661
3
In the Motion, the parties represent that Infinera is not and never has
been a defendant in either pending litigation involving Patent 6,888,661.
Motion 2. The parties also represent that none of the defendants in the
related litigations, provided therein, are or have ever been a real party in
interest in this proceeding. Motion 2-3. Additionally, the defendants in such
other related litigations have not filed a petition for inter partes review of
Patent 6,888,661. There is no pending motion by any third party for joinder
with this inter partes review.
The Board determines that, in the circumstances of this case, it is
appropriate to terminate review both as to Infinera and Cheetah without
rendering a final written decision See 35 U.S.C. § 317(a); 37 C.F.R.
§ 42.72.
It is
ORDERED that the joint motion to terminate IPR2013-00339 is
GRANTED, and this inter partes review is hereby terminated as to all
parties, including Infinera and Cheetah; and
FURTHER ORDERED that the parties’ joint request to have their
settlement agreement treated as business confidential information under the
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also GRANTED.
Case IPR2013-00339
Patent 6,888,661
4
For PETITIONER:
W. Karl Renner
Kevin E. Greene
Timothy Riffe
Fish & Richardson
axf@fr.com
greene@fr.com
riffe@fr.com
21141-0001IP1@fr.com

For PATENT OWNER:
Richard Krukar
Ortiz & Lopez, PLLC
krukar@olpatentlaw.com

Mohammed N. Islam
Patent Owner
mni@eecs.umich.edu