`571-272-7822
`
`
`Paper No. 11
`
`Entered: January 8, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRIME WIRE & CABLE, INC.,
`Petitioner,
`
`v.
`
`CANTIGNY LIGHTING CONTROL, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01592
`Patent 9,320,122 B2
`____________
`
`
`Before SALLY C. MEDLEY, DENISE M. POTHIER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`POTHIER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`IPR2018-01592
`Patent 9,320,122 B2
`
`
`
`Prime Wire & Cable, Inc. (Petitioner)1 and Cantigny Lighting Control,
`LLC (“Patent Owner”)2 filed a Joint Motion to Terminate Pursuant to 35
`U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.74 (“Joint Motion to
`Terminate”) (Paper 9) and a Joint Request to File Settlement Agreement as
`Business Confidential and to Maintain Said Agreement Separate from the
`Public File Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper
`10) in the above-captioned proceeding. The parties represent Petitioner,
`Patent Owner, and licensee Jasco Product Company3 have reached
`resolution on their dispute concerning U.S. Patent No. 9,320,122 B2 (“the
`’122 patent”) including the related litigation; the parties also represent a true
`and complete copy of their written settlement agreement has been filed
`concurrently with the above motion as required under 37 C.F.R. § 42.74(b).
`Paper 9, 1–2; Ex. 2001. The parties further certify that no other agreements
`or understandings exist between the parties concerning this proceeding.
`Paper 9, 1.
`This case is in an early stage; no institution of a trial has been made.
`Based on the facts of this case, we determine that it is appropriate to enter
`
`
`1 Petitioner, Prime Wire & Cable, Inc., identifies itself as a real party-in-
`interest and identifies its parent company as “YCF-BonEagle Co., Ltd.
`(‘YFC-Taiwan’), a limited liability company organized in Taiwan.” Paper 3,
`12.
`2 Patent Owner, Cantigny Lighting Control, LLC, identifies (1) itself and (2)
`Jasco Products Company, LLC as real parties-in-interest. Paper 6, 1.
`3 Jasco Products Company, LLC has been identified by Patent Owner as “the
`exclusive licensee of the ’122 patent.” Paper 6, 1.
`
`2
`
`
`
`IPR2018-01592
`Patent 9,320,122 B2
`
`
`judgment.4 Therefore, the parties’ joint motion to terminate the proceeding
`is granted.
`
`ORDER
`
`It is
`ORDERED that the parties’ joint motion to terminate the
`above-captioned case is granted, and the case is terminated;
`FURTHER ORDERED that the parties’ Joint Request to File
`Settlement Agreement as Business Confidential and to Maintain Said
`Agreement Separate from the Public File Pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) in the above-captioned case is granted; and
`FURTHER ORDERDED that Exhibit 2001 shall be kept separate
`from the pertinent file consistent with 37 C.F.R. § 42.74(b).
`
`
`
`
`4 A judgment means a final written decision by the Board, or a termination
`of a proceeding. 37 C.F.R. § 42.2.
`
`3
`
`
`
`IPR2018-01592
`Patent 9,320,122 B2
`
`
`For PETITIONER:
`John K. Buche
`Bryce A. Johnson
`BUCHE & ASSOCIATES, P.C.
`jbuche@buchelaw.com
`bjohnson@buchelaw.com
`
`For PATENT OWNER:
`Timothy Maloney
`Karen Wang
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`tim@fitcheven.com
`kwang@fitcheven.com
`phenkelmann@fitcheven.com
`
`
`
`4
`
`
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