CANON INC.v.YAMA CAPITAL LLC

Patent Trial and Appeal Board

Apr 4, 2014

08996810 (P.T.A.B. Apr. 4, 2014)

Trial@uspto.gov
571-272-7822
Paper No. 17
Date Entered: April 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CANON INC.
Petitioner

v.

YAMA CAPITAL LLC
Patent Owner
____________

Case IPR2014-00015
Patent 6,069,982
____________

Before BRIAN J. McNAMARA, BARBARA A. BENOIT, and
STACEY G. WHITE, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

JUDGMENT
TERMINATION OF THE PROCEEDING
37 C.F.R. § 42.73

Case IPR2014-00015
Patent 6,069,982

2

The parties have requested that this trial proceeding be terminated pursuant
to a settlement. On March 25, 2014, the Board authorized the parties to file a Joint
Motion To Terminate and a Joint Request to File the Settlement as Business
Confidential under 37 C.F.R. 42.74(c). Paper 13. On April 4, 2014 the parties
filed a Joint Motion to Terminate. Paper 14. See 35 U.S.C. § 317(a);
37 C.F.R. § 42.72. In their Joint Motion to Terminate, the parties requested that
their written agreement, a copy of which was filed as Paper 16, be treated as
business confidential. Paper 14. In a telephone conference on April 4, 2014,
during which Richard F. Martinelli represented Canon Inc. (“Petitioner”) and
Sean A. Passino represented Yama Capital LLC (“Patent Owner”), both counsel
represented that there are no other written or oral agreements between the parties
concerning US Patent 6,069,982 (the ’982 Patent), which is the subject of this
proceeding.
A decision by the Board to institute a trial has not yet been reached.
Therefore, this matter was in the preliminary stages at the time the parties moved
to terminate. The parties have represented that the co-pending litigation, styled
Yama Capital, LLC v. Canon, Inc. and Canon USA, Inc. 1:12-cv-07159, SDNY has
been dismissed with prejudice. Joint Mandatory Notice (Paper 15). The parties
have not identified any other related matters and have represented that they do not
contemplate any further litigation concerning the’982 Patent in the foreseeable
future. Paper 14. Under these circumstances, the Board determines that it is
appropriate to enter judgment
1
and terminate the trial without rendering a final
written decision. 37 C.F.R. § 42.72.

1
A judgment means a final written decision by the Board, or a termination of a
proceeding. 37 C.F.R. § 42.2.
Case IPR2014-00015
Patent 6,069,982

3

It is, therefore,
ORDERED that the joint motion to terminate the proceeding is GRANTED
and the proceeding is hereby terminated;
FURTHER ORDERED that the parties’ joint request that the settlement
agreement (Paper 16) be treated as business confidential information which shall
be kept separate from the file of the involved patents under the provisions of
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.

PETITIONER:

Joseph Calvaruso
Richard Martinelli
Mark Shean
ORRICK, HERRINGTON, &
SUTCLIFFE LLP
jcalvaruso@orrick.com
rmartinelli@orrick.com
mshean@orrick.com

PATENT OWNER:

Randy A. Noranbrock
Sean A. Passino
LOWE HAUPTMAN & HAM, LLP
rnoranbrock@ipfirm.com