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`
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`Paper 17
`Entered: October 28, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
`
`FINISAR CORP.,
`Petitioner,
`
`v.
`
`THOMAS SWAN & CO. LTD.,
`Patent Owner.
`_______________
`
`Case IPR2014-00460 (Patent 7,145,710 B2)
`Case IPR2014-00461 (Patent 7,664,395 B2)
`Case IPR2014-00462 (Patent 8,089,683 B2)
`Case IPR2014-00465 (Patent 8,335,033 B2)1
`_______________
`
`
`Before SALLY C. MEDLEY, MICHELLE R. OSINSKI, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This decision addresses issues that are the same in each of the four cases. We
`exercise our discretion to issue one decision to be entered in each case. The parties
`are not authorized to use this heading style without authorization from the Board.
`
`

`

`Case IPR2014-00460 (Patent 7,145,710 B2)
`Case IPR2014-00461 (Patent 7,664,395 B2)
`Case IPR2014-00462 (Patent 8,089,683 B2)
`Case IPR2014-00465 (Patent 8,335,033 B2)
`
`
`Petitioner filed petitions for inter partes review of the four involved patents
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`and Patent Owner filed preliminary responses. On August 21, 2014, we instituted
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`trial for each case.
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`On October 23, 2014, the parties informed the Board that the parties have
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`reached a settlement agreement. The parties seek authorization from the Board to
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`file a joint motion to terminate the proceeding pursuant to 35 U.S.C. § 317.
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`An inter partes review has been instituted in each case. The Board does not
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`have before it full briefing on the issues raised during each trial. Moreover, the
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`Board has not entered a final written decision. Generally, the Board expects that a
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`proceeding will terminate after the filing of a settlement agreement. See, e.g.,
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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`The rule governing settlement indicates that any agreement between the parties
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`made in connection with, or in contemplation of, the termination of a proceeding
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`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
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`Based on the facts of these proceedings, the parties are authorized to, and
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`shall file, in addition to the settlement agreement, a joint motion to terminate the
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`proceeding briefly explaining why termination is appropriate in these cases. The
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`joint motion also should update the Board as to the status of any other matters
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`involving the patents at issue. The parties also must file, as an exhibit, a true copy
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`of their settlement agreement to terminate the proceedings. A redacted version of
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`the settlement agreement will not be accepted as a true copy of the settlement
`
`agreement. Any request that the agreement be treated as business confidential
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`information and be kept separate from the files of the involved patent must be filed
`
`with the settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to
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`FAQ G2 on the Board’s website page at
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`

`

`Case IPR2014-00460 (Patent 7,145,710 B2)
`Case IPR2014-00461 (Patent 7,664,395 B2)
`Case IPR2014-00462 (Patent 8,089,683 B2)
`Case IPR2014-00465 (Patent 8,335,033 B2)
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their
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`settlement agreement as confidential (e.g., uploading as “Parties and Board Only”).
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`The joint motion to terminate and the settlement agreement shall be filed no
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`later than November 3, 2014.
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`Accordingly, it is
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`ORDERED that the parties are authorized to file a separate joint motion to
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`terminate in each proceeding;
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`FURTHER ORDERED that the joint motions are due no later than
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`November 3, 2014; and
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`FURTHER ORDERED that the joint motions shall be accompanied by a
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`true copy of the settlement agreement as required by 37 C.F.R. § 42.74(b);
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`FURTHER ORDERED that the parties may request that the settlement
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`agreement be treated as business confidential information as specified by 37 C.F.R.
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`§ 42.74(c); and
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`FURTHER ORDERED that any confidential settlement agreement must be
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`filed electronically via the Patent Review Processing System (PRPS) in accordance
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`with the instructions provided on the Board’s website (e.g., uploading as “Parties
`
`and Board Only”); and
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`FURTHER ORDERED that the remaining DUE DATES in the proceedings
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`are vacated.
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`

`

`Case IPR2014-00460 (Patent 7,145,710 B2)
`Case IPR2014-00461 (Patent 7,664,395 B2)
`Case IPR2014-00462 (Patent 8,089,683 B2)
`Case IPR2014-00465 (Patent 8,335,033 B2)
`
`PETITIONER:
`
`David Radulescu
`david@radulescullp.com
`
`Gregory Maskel
`greg@radulescullp.com
`
`Kurt Rauschenbach
`kurt@rauschenbach.com
`
`
`PATENT OWNER:
`
`Marc Wefers
`wefers@fr.com
`
`Karl Renner
`IPR28733-0002IP1@fr.com
`
`
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`