Chums, Inc.v.Cablz, Inc.

Patent Trial and Appeal Board

Jun 17, 2015

12991668 (P.T.A.B. Jun. 17, 2015)

Trials@uspto.gov Paper 10
571-272-7822 Entered: June 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CHUMS, INC., and CROAKIES, INC.,
Petitioner,

v.

CABLZ, INC.,
Patent Owner.
____________

Case IPR2015-00602
Patent 8,366,268 B2

Before JOSIAH C. COCKS, JEREMY M. PLENZLER, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

TERMINATION
Dismissing the Proceeding
37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)

IPR2015-00602
Patent 8,366,268 B2

2
The parties have requested that the above-captioned proceeding be
terminated. The Board authorized the parties to file a joint motion to
terminate the above-captioned proceeding on June 5, 2015. The
authorization included the instruction that the joint motion “must include a
true copy of any agreement or understanding and include a statement
certifying that there are no collateral agreements or understandings made in
connection with, or in contemplation of, the termination of the inter partes
review.”
On June 15, 2015, the parties filed a “Joint Motion to Terminate
Proceedings Pursuant to 35 U.S.C. § 317” in the above-captioned
proceeding. Paper 8. The joint motion to terminate indicates that “[n]o
agreements or understandings and no collateral agreements or
understandings have been made between the parties in connection with, or in
contemplation of, the termination of this proceeding.” Id. at 1.
This case is in the preliminary proceeding stage. A preliminary
proceeding begins with the filing of a petition for instituting a trial and ends
with a written decision as to whether trial will be instituted. See 37 C.F.R.
§ 42.2. Petitioner filed its Petition on January 22, 2015. Patent Owner filed
a Preliminary Response on May 12, 2015. A decision on institution, which
has not yet been made, is due on or before August 12, 2015.
The motion states that Petitioner and Patent Owner jointly request
termination of IPR2015-00602. Paper 8, 1. The parties represent that the
related matters identified in the petition, namely, Cablz, Inc. v. Chums, Inc.,
2:14-cv-00091-SLB (N.D. Ala.) and Cablz, Inc. v. Croakies, Inc., 2:14-cv-
00126-SGC (N.D. Ala.) remain stayed pending the outcome of IPR2014-
01240, also involving U.S. Patent No. 8,366,268 B2 (“the ’268 patent”),
IPR2015-00602
Patent 8,366,268 B2

3
which is ongoing. Id. The parties also represent that no further litigation or
proceedings involving the ’268 patent are contemplated in the foreseeable
future. Id.
Under 37 C.F.R. § 42.74(b), “[a]ny agreement or understanding
between the parties made in connection with, or in contemplation of, the
termination of a proceeding shall be in writing and a true copy shall be filed
with the Board before the termination of the trial.” The parties clearly and
jointly indicate that no agreements, understandings, collateral agreements, or
collateral understandings have been made between the parties in connection
with or in contemplation of the termination of this proceeding. Paper 8, 1.
Given the lack of ambiguity of the foregoing, and the parties’ statement that
there is no settlement agreement between them (Paper 9, 3–4), we construe
the parties’ representations as a certification that there are no other written or
oral agreements or understandings, including any collateral agreements,
between them in connection with or in contemplation of the termination of
this proceeding. See, e.g., Case No. IPR2015-00651, slip op. at 1–2 (PTAB
June 1, 2015) (Paper 11); Case No. CBM2014-00090, slip op. at 2–3 (PTAB
August 12, 2014) (Paper 10).
Based on the facts of the case, and in view of the parties’ joint request
for termination of this proceeding, we determine that it is appropriate to
dismiss the petition as to both Petitioner and Patent Owner without rendering
either a decision to institute or a final written decision. See 37 C.F.R.
§§ 42.5(a); 42.71(a). Therefore, the joint motion to terminate is granted.
This paper does not constitute a final written decision pursuant to 35 U.S.C.
§ 318(a).

IPR2015-00602
Patent 8,366,268 B2

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Accordingly, it is
ORDERED that the joint motion to terminate the proceeding is
granted; and
FURTHER ORDERED that the Petition for Inter Partes Review of
the above-referenced patent is dismissed.

IPR2015-00602
Patent 8,366,268 B2

5
FOR PETITIONER:

Daniel Higgs
dchiggs@stoel.com

Andrew Maslow
andy@andymaslow.com

FOR PATENT OWNER

Joseph Bird
jbird@babc.com