`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FINISAR CORPORATION
`Petitioner
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`v.
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`THOMAS SWAN & CO., LTD.
`Patent Owner
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`Case IPR2014-00461
`Patent 7,664,395
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`JOINT MOTION TO TERMINATE PROCEEDING UNDER 35 U.S.C. § 317
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`1
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`Joint Motion to Terminate Proceeding
`Case: IPR2014-00461
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`Pursuant to 35 U.S.C. § 317(a), the Patent Owner Thomas Swan & Co. Ltd.
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`and Petitioner Finisar Corp. (collectively “Parties”) hereby jointly move for an
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`order terminating the inter partes review, subject to the terms of the Settlement
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`Agreement, dated October 21, 2014, entered into by the Parties.
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`The IPR Proceeding relates to a petition for inter partes review filed
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`February 26, 2014, directed to Patent No. 7,664,395 (the “’395 Patent”), and
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`assigned case number IPR2014-00461. Patent Owner filed a Preliminary Response
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`on June 6, 2014. (Paper No. 8.) The PTAB instituted trial on August 21, 2014.
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`(Paper No. 9.)
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`The Parties have settled their dispute, and have reached agreement to
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`terminate this IPR Proceeding. The Parties’ Settlement Agreement has been made
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`in writing, and a true copy of same is being filed concurrently herewith as an
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`Exhibit.
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`In addition, the Parties desire that the Settlement Agreement be maintained
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`as business confidential information under 37 C.F.R. § 42.74(c), and a separate
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`joint request to that effect is being filed concurrently herewith.
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`As stated in 35 U.S.C. § 317(a), because Petitioner and Patent Owner jointly
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`request this termination, no estoppel under 35 U.S.C. § 315(e) shall attach to
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`Petitioner.
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`1
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`1. Reasons Why Termination Is Appropriate.
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`Joint Motion to Terminate Proceeding
`Case: IPR2014-00461
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`Termination is proper under 35 U.S.C. § 317(a) because the Parties are
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`jointly requesting termination, and the Office has not yet “decided the merits of the
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`proceeding before the request for termination is filed.” Indeed, it is far too early in
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`this IPR Proceeding for any decision on the merits. Patent Owner’s Response to
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`the Petition and Institution Decision has not yet been filed, and is not due until
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`December 24, 2014 under the current Scheduling Order, as modified by a joint
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`stipulation by the parties. (Paper Nos. 10 and 11.) Moreover, Patent Owner has not
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`yet cross-examined Petitioner’s expert declarant, Dr. Katherine Hall.
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`As noted in the Patent Office Trial Practice Guidelines, “there are strong
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`public policy reasons to favor settlement between the parties to a proceeding . . . .
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`The Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding. 35
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`U.S.C. 317(a), as amended, and 35 U.S.C. 327.”1 Accordingly, termination is
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`appropriate here.
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`2.
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`Status of Related District Court Litigation.
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`The ’395 Patent is the subject of the following pending litigation: Thomas
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`Swan & Co. Ltd. v. Finisar Corp., et al., No. 2:13-cv-178 (E.D. Tex.). The
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`1 See Federal Register Vol. 77, No. 157 at 48768.
`2
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`defendants in that case are Petitioner Finisar Corp. and its customer Fujitsu
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`Joint Motion to Terminate Proceeding
`Case: IPR2014-00461
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`Communications, Inc. (“FNC”)2 (collectively, “Defendants”).
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`On September 12, 2014, the Parties notified the District Court that the
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`Parties and FNC had reached an agreement that settles in principle all matters in
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`controversy between them and jointly requested a stay of the case (and any and all
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`attendant deadlines) for thirty (30) days to allow settlement obligations to be met.
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`Such obligations include the drafting and executing a final written settlement
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`agreement.
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`Consistent therewith, pursuant to the Settlement Agreement, the Parties and
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`FNC have filed with the District Court a stipulated motion and proposed order
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`dismissing with prejudice all claims and counterclaims pending between Thomas
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`Swan & Co. Ltd. and Defendants in that case on October 23, 2014.
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`2 On August 26, 2014, FNC filed a separate petition for inter partes review for the
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`’395 Patent, which was assigned Case No. IPR2014-01384. Pursuant to the
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`Settlement Agreement, Thomas Swan and FNC shall submit a joint motion to
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`terminate this proceeding as well.
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`3
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`Joint Motion to Terminate Proceeding
`Case: IPR2014-00461
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`3.
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`Related IPR Proceedings
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`The Parties are also involved in the following IPR proceedings, and pursuant
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`to the Settlement Agreement, shall submit a joint motion to terminate each of these
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`proceedings as well:3
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`Case No.
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`Filing Date
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`Subject Patent
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`IPR2014-00460
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`February 26, 2014
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`US 7,145,710
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`IPR2014-00462
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`February 26, 2014
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`US 8,089,683
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`IPR2014-00465
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`February 26, 2014
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`US 8,335,033
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`3 On August 26, 2014, FNC also filed petitions for inter-partes review for these
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`same patents, and the petitions have been assigned the following case numbers:
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`IPR2014-01383, IPR2014-01382, and IPR2014-01381, respectively. Pursuant to
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`the Settlement Agreement, Thomas Swan and FNC shall submit a joint motion to
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`terminate each of these proceedings as well.
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`4
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`Joint Motion to Terminate Proceeding
`Case: IPR2014-00461
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`For the foregoing reasons, the Parties jointly request termination of IPR No.
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`Respectfully submitted,
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`/David Radulescu Reg. No. 36,250/
`David Radulescu
`Reg. No. 36,250, for
`For Petitioner, Finisar Corporation
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`/Marc M. Wefers Reg. No. 56,842/
`Marc M. Wefers,
`Reg. No. 56,842, for
`Patent Owner, Thomas Swan & Co. Ltd.
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`IPR2014-00461.
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`Date: October 28, 2014
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`Date: October 28, 2014
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2569
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`5
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`FINISAR CORP.
`Petitioner
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`v.
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`THOMAS SWAN & CO. LTD.
`Patent Owner
`____________
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`Case IPR2014-00461
`Patent 7,664,395
`____________
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION PURSUANT TO 35 U.S.C. § 317
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`Case IPR2014-00461
`Attorney Docket No: 28733-0003IP1
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Patent Owner
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`Thomas Swan & Co. Ltd. and Finisar Corp. (collectively, “Parties”) jointly request
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`to file the Settlement Agreement, including the entirety of the Exhibit to the Joint
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`Motion To Terminate Proceeding, as business confidential information, which
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`shall be kept separate from the file of the involved patents.
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`Date: October 28, 2014
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`Date: October 28, 2014
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Respectfully submitted,
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`/David Radulescu Reg. No. 36,250/
`David Radulescu
`Reg. No. 36,250, for
`Petitioner, Finisar Corporation
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` /Marc M. Wefers Reg. No. 56,842/
`Marc M. Wefers
`Reg. No. 56,842, for
`Patent Owner, Thomas Swan & Co. Ltd.
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`2
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`Case IPR2014-00461
`Attorney Docket No: 28733-0003IP1
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
`certifies that on October 29, 2014, a complete and entire copy of:
`JOINT MOTION TO TERMINATE PROCEEDING UNDER
`35 U.S.C. § 317
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION PURSUANT TO 35 U.S.C. § 317
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`were provided via email, to Petitioner by serving the email correspondence
`addresses of record as follows:
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`David Radulescu
`Greg Maskel
`Radulescu LLP
`136 Madison Avenue, 6th Floor
`New York, NY 10016
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`Kurt Rauschenbach
`Rauschenbach Patent Law Group
`P.O. Box 849
`Franconia, NH 03580
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`Email: david@radulescullp.com
`Email: greg@radulescullp.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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