FedEx Corporate Services, Inc.v.Catharon Intellectual Property, LLC

Patent Trial and Appeal Board

Jun 1, 2015

08902591 (P.T.A.B. Jun. 1, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Entered: June 1, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FEDEX CORPORATE SERVICES, INC.,
Petitioner,

v.

CATHARON INTELLECTUAL PROPERTY, LLC,
Patent Owner.
____________

Case IPR2015-00651
Patent 6,065,046

Before MICHAEL R. ZECHER, FRANCES L. IPPOLITO, and
MINN CHUNG, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Termination of the Proceeding
37 C.F.R. §§ 42.72, 42.74

IPR2015-00651
Patent 6,065,046

2
I. DISCUSSION
On May 27, 2015, the parties filed a Joint Motion to Terminate this
proceeding (Paper 8), along with a Joint Certification regarding the Joint
Motion to Terminate (Paper 10). This proceeding is still in its preliminary
stages. Patent Owner, Catharon Intellectual Property, LLC (“Catharon”),
did not file a Preliminary Response, and we have not entered a decision
whether or not to institute an inter partes review. In the Joint Motion to
Terminate this proceeding, the parties represent that the related district court
case involving U.S. Patent No. 6,065,046 (“the ’046 patent”) has been
dismissed with prejudice. Paper 8, 2. The parties filed a copy of the
executed Stipulation of Dismissal (Ex. 1024), as well as the Order of
Dismissal of the Complaint (Ex. 1025). The parties did not identify any
other related proceedings involving the ’046 patent. See Paper 8, 2.
In the Joint Certification, the parties certify that:
there are no other written or oral agreements or understandings,
including any collateral agreements, between them, including
but not limited to licenses, covenants not to sue, confidentiality
agreements, payment agreements, or other agreements of any
kind that have been made in connection with or in
contemplation of the termination of the instant proceeding or
the related civil proceeding . . . .

Paper 10, 2. The parties further certify that “[t]he entire agreement between
the parties related to termination of this proceeding and the related civil
proceeding is memorialized in [Exhibits 1024 and 1025].” Id.
Generally, “[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 termination of the trial.” 37 C.F.R. § 42.74(b). The parties, however,
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Patent 6,065,046

3
certify that no such written settlement agreement exists. Paper 10, 2. In
addition, the related district court case has been dismissed with prejudice.
Ex. 1025. Under these circumstances, we determine that it is appropriate to
terminate this proceeding without rendering any further decisions. See
37 C.F.R. § 42.72.

II. ORDER
In consideration of the foregoing, it is hereby ORDERED that the
parties’ Joint Motion to Terminate this proceeding is GRANTED, and this
proceeding is hereby terminated.
IPR2015-00651
Patent 6,065,046

4
For PETITIONER:

Jeffrey Berkowitz
Jia W. Lu
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
jeffrey.berkowitz@finnegan.com
jia.lu@finnegan.com

For PATENT OWNER:
William A Meunier
Ping Hu
Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, P.C.
WAMeunier@mintz.com
PHu@mintz.com