Panasonic System Networks Co., Ltd.v.6115187 Canada Inc.

Patent Trial and Appeal Board

Nov 26, 2014

10706513 (P.T.A.B. Nov. 26, 2014)

Trials@uspto.gov Paper 11
571-272-7822 Entered: November 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

PANASONIC SYSTEM NETWORKS CO., LTD.,
Petitioner,

v.

6115187 CANADA INC.,
Patent Owner.
_______________

Case IPR2014-01438
Patent 6,844,990 B2
_______________

Before KEVIN F. TURNER, BRIAN J. MCNAMARA, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

IPR2014-01438
Patent 6,844,990 B2

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I. INTRODUCTION
This case involves a request for inter partes review of U.S. Patent No.
6,844,990 B2 (“the ’990 patent”). Paper 2. On November 21, 2014, Judges
Turner, McNamara, and Weinschenk held a telephone conference call with
counsel for Petitioner Panasonic System Networks Co., Ltd. (“Petitioner”)
and counsel for Patent Owner 6115187 Canada Inc. (“Patent Owner”).
During the telephone conference, we authorized the parties to file a joint
motion to terminate this proceeding. On November 21, 2014, the parties
filed a joint motion to terminate under 35 U.S.C. § 317 and 37 C.F.R.
§ 42.74 (Paper 9, “Mot.”), along with a copy of the parties’ written
settlement agreement (Ex. 1015). The parties concurrently filed a joint
request to treat the settlement agreement as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 10.
For the following reasons, the joint motion to terminate and the joint request
to treat the settlement agreement as business confidential information are
granted.
II. ANALYSIS
This proceeding is in the preliminary stage. A Patent Owner
Preliminary Response has not been filed, and a decision whether to institute
a trial has not been rendered. Patent Owner represents that there is no
currently pending district court litigation or ITC proceeding regarding the
’990 patent, and no decision has been made regarding future litigation. Mot.
1–2. Patent Owner also represents that there is no other related proceeding
regarding the ’990 patent in the Office. Id. at 2. Based on the facts of this
case, we determine it is appropriate to enter judgment terminating this
proceeding with respect to all parties. We further find sufficient cause to
IPR2014-01438
Patent 6,844,990 B2

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treat the settlement agreement as business confidential information.
Therefore, we grant the joint motion to terminate and the joint request to
treat the settlement agreement as business confidential information.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the joint motion to terminate is granted, and this
proceeding is terminated as to all parties; and
FURTHER ORDERED that the joint request that the settlement
agreement filed as Exhibit 1015 in this proceeding be treated as business
confidential information, kept separate from the file of the ’990 patent, and
made available only to Federal Government agencies upon written request or
any other person upon written request and a showing of good cause pursuant
to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.

IPR2014-01438
Patent 6,844,990 B2

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PETITIONER:

Michael J. Fink
Arnold Turk
GREENBLUM & BERNSTEIN, P.L.C.
mfink@gbpatent.com
aturk@gbpatent.com

PATENT OWNER:

John D. Simmons
Stephen E. Murray
PANITCH SCHWARZE BELISARIO & NADEL LLP
jsimmons@panitchlaw.com
smurray@panitchlaw.com