IN THE 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 No. 9,320,122 B2
`__________
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. §§ 42.72 AND 42.74
`
`
`
`
`
`
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`PRIME WIRE & CABLE, INC.,
`Petitioner
`
`v.
`
`CANTIGNY LIGHTING CONTROL, LLC,
`Patent Owner
`__________
`
`Case IPR2018-01592
`Patent No. 9,320,122 B2
`__________
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. §§ 42.72 AND 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization of December 4, 2018, Petitioner Prime Wire & Cable, Inc.
`
`(“Petitioner”) and Patent Owner Cantigny Lighting Control, LLC (“Patent Owner”)
`
`jointly move to terminate the present inter partes review proceeding in light of
`
`Petitioner, Patent Owner, and licensee Jasco Products Company’s (“Jasco”)
`
`resolution of their dispute regarding U.S. Patent No. 9,320,122 (“the ’122 patent”).
`
`Petitioner and Patent Owner are concurrently filing a true and complete copy
`
`of their written Settlement Agreement (Confidential Exhibit 2001) in connection
`
`with this matter as required by the statute. Petitioner and Patent Owner certify that
`
`there are no other agreements or understandings, oral or written, between the parties,
`
`including any collateral agreements, made in connection with, or in contemplation
`
`of, the termination of the present proceeding. A joint request to treat the Settlement
`
`Agreement as business confidential information kept separate from the file of the
`
`involved patent pursuant to 35 U.S.C. § 317(b) is being filed concurrently.
`
`1
`
`
`
`
`
`LEGAL STANDARD
`
`An inter partes review proceeding “shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner, unless the
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`Office has decided the merits of the proceeding before the request for termination is
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`filed.” 35 U.S.C. § 317(a). A joint motion to terminate generally “must (1) include
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`a brief explanation as to why termination is appropriate; (2) identify all parties in
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`any related litigation involving the patents at issue; (3) identify any related
`
`proceedings currently before the Office, and (4) discuss specifically the current
`
`status of each such related litigation or proceeding with respect to each party to the
`
`litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018,
`
`Paper No. 26, at *2 (P.T.A.B. July 28, 2014).
`
`ARGUMENT
`
`
`
`Termination of the present inter partes review proceeding is appropriate
`
`because (1) Petitioner, Patent Owner, and licensee Jasco have resolved their dispute
`
`regarding the ’122 patent and have agreed to terminate this proceeding, (2) the Office
`
`has not yet decided the merits of the proceeding, and (3) public policy favors the
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`termination.
`
`This proceeding is in its early stages. To date, Patent Owner has neither filed
`
`nor waived a preliminary response to the petition pursuant to the December 11, 2018
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`deadline provided in the Board’s Notice of September 11, 2018 (Paper 5).
`
`2
`
`
`
`
`
`Public policy also favors the termination. As recognized by the rules of
`
`practice before the Board:
`
`There are strong public policy reasons to favor settlement
`between the parties to a proceeding. The Board will be
`available to facilitate settlement discussions, and where
`appropriate, may require a settlement discussion as part of
`the proceeding. The Board expects that a proceeding will
`terminate after the filing of a settlement agreement, unless
`the Board has already decided the merits of the
`proceeding.
`
`Patent Office Trial Practice Guide, Fed. Register, Vol. 77, No. 157 at 48768 (Aug.
`
`14, 2012). Moreover, no public interest or other factors militate against termination
`
`of this proceeding.
`
`As to the remaining Heartland Tanning requirements, the sole district court
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`litigation that involves the ’122 patent or any related patents is Jasco Products
`
`Company, LLC and Cantigny Lighting Control, LLC v. Prime Wire & Cable, Inc.
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`and YFC-BonEagle Electric Co., Ltd., Case No. 5:18-cv-00044-RJC-DSC
`
`(W.D.N.C., filed March 14, 2018). This litigation was dismissed on November 27,
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`2018 (Dkt. No. 38) pursuant to the Settlement Agreement (Exhibit 2001). Apart from
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`the instant proceeding, no petitions for Inter Partes Review have been filed against
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`the ’122 patent or any related patent.
`
`3
`
`
`
`
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner and Patent Owner jointly and
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`respectfully request that the instant proceeding be terminated.
`
`Respectfully submitted,
`FITCH, EVEN, TABIN & FLANNERY LLP
`By: /Timothy P. Maloney/
`
`
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`Attorney for Patent Owner
`
`BUCHE & ASSOCIATES, P.C.
`
`By: /John K. Buche/
`John K. Buche
`Reg. No. 46,584
`jbuche@buchelaw.com
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`
`Dated: December 5, 2018
`
`
`
`
`
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies in accordance with 37 C.F.R. § 42.6(e) that on
`
`December 5, 2018, a copy of the foregoing JOINT MOTION TO TERMINATE
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`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72 AND 42.74 was served
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`by e-mail on counsel for Petitioner at the following e-mail addresses:
`
`John K. Buche, jbuche@buchelaw.com
`Bryce A. Johnson, bjohnson@buchelaw.com
`
`Petitioner has agreed to electronic service.
`
`
`
`By: /Timothy P. Maloney/
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`
`
`
`
`
`Dated: December 5, 2018
`
`120 South LaSalle Street
`Suite 2100
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`5
`
`
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