UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`
`
`AXIS COMMUNICATIONS, INC. and AXIS COMMUNICATIONS AB
`Petitioners,
`
`v.
`
`CANATELO, LLC
`Patent Owner.
`____________
`
`Case IPR2014-00394
`Patent 6,476,858
`____________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`3118313-2
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`
`
`AXIS COMMUNICATIONS, INC. and AXIS COMMUNICATIONS AB
`Petitioners,
`
`v.
`
`CANATELO, LLC
`Patent Owner.
`____________
`
`Case IPR2014-00394
`Patent 6,476,858
`____________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`3118313-2
`
`
`
`Joint Motion to Terminate Proceedings
`Case IPR2014-00394
`Patent 6,476,858
`
`Pursuant to 35 U.S.C. § 317(a), Petitioners AXIS COMMUNICATIONS,
`
`
`
`INC. and AXIS COMMUNICATIONS AB (collectively “Petitioners”), and Patent
`
`Owner CANATELO, LLC (“Patent Owner”), jointly request termination of
`
`IPR2014-00394, which is directed to Patent 6,476,858 (the “‘858 Patent”).
`
`
`
`This inter partes review was accorded a filing date of January 30, 2014.
`
`Corrected petition papers were filed February 21, 2014 and accepted in a Notice
`
`dated February 24, 2014. No other papers, other than the Patent Owner’s
`
`Mandatory Notices, have been filed in this proceeding, no other notices or
`
`decisions have issued, and there is no final written decision on the merits of this
`
`review proceeding. The parties settled their dispute and agreed to request the
`
`termination of this inter partes review.
`
`
`
`The parties’ confidential Settlement Agreement was reduced to writing, and
`
`a true copy of the same is attached hereto as Exhibit 1.1 The Settlement Agreement
`
`is marked Confidential and the parties desire that the Settlement Agreement be
`
`maintained as business confidential information under 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c). A separate joint request to that effect is being filed on even date
`
`herewith.
`
`
`
`
`1 The Settlement Agreement is being filed electronically via the Patent Review
`Processing System (PRPS) as “Parties and Board Only.”
`
`3118313-2
`
`1
`
`
`
`Joint Motion to Terminate Proceedings
`Case IPR2014-00394
`Patent 6,476,858
`
`
`Reasons Why Termination is Appropriate
`
`1.
`
`
`
`Termination is proper under 35 U.S.C. § 317(a) because the petitioner and
`
`the patent owner are jointly requesting termination and the Office has not yet
`
`“decided the merits of the proceeding before the request for termination [was]
`
`filed.”
`
`
`
`
`
`2.
`
`Related District Court Litigation Status
`
`The ‘858 patent is the subject of the following pending litigations: Canatelo,
`
`LLC. v. AXIS Communications AB, et al., District of Delaware, Case No. 1:13-cv-
`
`01227-GMS; Canatelo v. Avigilon Corp., District of Puerto Rico, Case 3:12-cv-
`
`01431; and Canatelo v. Trendnet, Inc., District of Puerto Rico, Case 3:13-cv-01093.
`
`All parties to the Canatelo, LLC. v. AXIS Communications AB, et al., District of
`
`Delaware, Case No. 1:13-cv-01227-GMS litigation, including Patent Owner and
`
`Petitioners herein, filed a Stipulation of Dismissal as to all claims and counter-
`
`claims on June 30, 2014.
`
`
`
`
`
`3.
`
`Future Participation by the Parties
`
`Petitioners will not further participate in this proceeding, even if they are not
`
`terminated pursuant to this joint motion. Should the Board determine that
`
`termination is not proper with respect to Patent Owner, termination with respect to
`
`Petitioner is proper under 35 U.S.C. § 317(a) because the parties are jointly
`
`3118313-2
`
`2
`
`
`
`Joint Motion to Terminate Proceedings
`Case IPR2014-00394
`Patent 6,476,858
`
`requesting termination and the Office has not yet “decided the merits of the
`
`proceeding before the request for termination [was] filed.”
`
`Patent Owner’s participation in any further proceedings would depend upon
`
`the condition for the same and Patent Owner reserves the right to so participate, if
`
`necessary.
`
`Respectfully Submitted,
`
`
`
`PETITIONERS,
`
`
`
`
`
` /Anthony S. Volpe/
`Anthony S. Volpe, Reg. No. 28,377
`Michael F. Snyder, Reg. No. 58,347
`Attorneys for Petitioners
`AXIS COMMUNICATIONS AB and AXIS
`COMMUNICATIONS, INC.
`Volpe and Koenig, P.C.
`United Plaza
`30 South 17th Street
`Philadelphia, PA 19103-4009
`215-568-6400
`avolpe@vklaw.com
`msnyder@vklaw.com
`
`PATENT OWNER:
`
`
`
`
`
` /Víctor M. Rodríguez Reyes/
`Eugenio J. Torres-Oyola (Reg. No. 47,141)
`Víctor M. Rodríguez-Reyes (Reg. No. 68,866)
`Rafael Rodríguez-Muriel (Reg. No. 69,980)
`José A. Medina (Reg. No. 71,862)
`FERRAIUOLI LLC
`221 Plaza 5th Floor
`
`3118313-2
`
`3
`
`
`
`Joint Motion to Terminate Proceedings
`Case IPR2014-00394
`Patent 6,476,858
`
`
`221 Ponce De León Ave.
`San Juan, Puerto Rico 00917
`787-766-7000
`Etorres@Ferraiuoli.Com
`Vrodriguezreyes@Ferraiuoli.Com
`Rrodriguez@Ferraiuoli.Com
`Jmedina@Ferraiuoli.Com
`
`
`
`3118313-2
`
`4
`
`
`
`Joint Motion to Terminate Proceedings
`Case IPR2014-00394
`Patent 6,476,858
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies that a copy of the foregoing Joint Motion to
`
`Terminate Proceedings was served on June 30, 2014, by electronic mail (by prior
`
`agreement of the parties) at the following email addresses:
`
`Eugenio J. Torres-Oyola
`Ferraiuoli LLC
`221 Ponce de León Ave., 5th Floor
`San Juan, PR 00917
`etorres@ferraiuoli.com
`patent@ferraiuoli.com
`
`Víctor M. Rodríguez-Reyes
`Rafael Rodríguez-Muriel
`José A. Medina
`Cristina Arenas Solís
`Ferraiuoli LLC
`221 Ponce de León Ave., 5th Floor
`San Juan, PR 00917
`vrodriguezreyes@ferraiuoli.com
`rrodriguez@ferraiuoli.com
` jmedina@ferraiuoli.com,
`carenas@ferraiuoli.com
`
`
`
`
`
`
`
`
`
`
`
`Dated: June 30, 2014
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`PETITIONERS,
`
`
`
` /Anthony S. Volpe/
`Anthony S. Volpe, Reg. No. 28,377
`Michael F. Snyder, Reg. No. 58,347
`Attorneys for Petitioners
`AXIS COMMUNICATIONS AB and AXIS
`COMMUNICATIONS, INC.
`Volpe and Koenig, P.C.
`United Plaza
`30 South 17th Street
`Philadelphia, PA 19103-4009
`215-568-6400
`avolpe@vklaw.com
`msnyder@vklaw.com
`
`3118313-2
`
`5
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