Capella Photonics, Inc.

Patent Trials and Appeals Board

Dec 28, 2021

IPR2021-00624 (P.T.A.B. Dec. 28, 2021)

Trials@uspto.gov Paper 26
Tel: 571-272-7822 Date: December 28, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CIENA CORPORATION,
Petitioner,

v.

CAPELLA PHOTONICS, INC.,
Patent Owner.
____________

IPR2021-00624
Patent RE47,906 E
____________

Before JOSIAH C. COCKS, JAMES A. TARTAL, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
Granting Joint Request to Treat Settlement
Agreement as Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2021-00624
Patent RE47,906 E

2
On September 7, 2021, we instituted an inter partes review of claims
89–111, 113, and 114 in U.S. Patent No. RE47,906 E (Exhibit 1001, “the
’906 patent”) under 35 U.S.C. §§ 311–319. Paper 14.
On December 23, 2021, after receiving Board authorization, Ciena
Corp. (“Petitioner”) and Capella Photonics, Inc. (“Patent Owner”) filed a
Joint Motion to Terminate under 35 U.S.C. § 317 and 37 C.F.R. § 42.74.
Paper 23. The parties also filed a copy of an agreement titled “Settlement
Agreement, License, and Covenant Not to Sue.” Ex. 2025. In addition, the
parties filed a Joint Request to Keep Agreement Business Confidential and
Separate under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 24.
Petitioner and Patent Owner represent that they “have entered into a
confidential settlement agreement that resolves all underlying disputes
between the parties with respect to this inter partes review (IPR)
proceeding.” Paper 23, 1. The parties represent that “their entire agreement
in connection with the termination of this proceeding is embodied in”
Exhibit 2025 and that “[t]here are no other agreements, oral or written,
between the parties made in connection with, or in contemplation of, the
termination of this proceeding.” Id. at 3. “The parties consider”
Exhibit 2025 “to contain highly sensitive confidential business information
that would substantially harm their business interests if publicly disclosed,”
and “[a]s such, the parties hereby jointly request that the settlement
agreement be kept as a separate paper to be made available only under the
provisions of 35 U.S.C § 317(b) and 37 C.F.R. § 42.74(c).” Paper 24, 1.
Additionally, Petitioner and Patent Owner contend that the Board “can
conserve significant administrative and judicial resources by terminating the
IPR2021-00624
Patent RE47,906 E

3
proceeding now, removing the need for the Board to render a final written
decision.” Paper 23, 2.
This proceeding has not progressed very far. Patent Owner has not
filed its Response. Terminating this proceeding will save the Board
administrative and judicial resources, e.g., in conducting an oral argument
and issuing a final written decision to decide the patentability issues raised
in the Petition. Further, “[t]here are strong public policy reasons to favor
settlement between the parties to a proceeding,” and “[t]he 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.” Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
Under these circumstances, we determine that it is appropriate to
terminate this proceeding. We also determine that it is appropriate to treat
the parties’ settlement agreement (Exhibit 2025) as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
ORDER
Accordingly, it is
ORDERED that the parties’ Joint Motion to Terminate (Paper 23) is
granted;
FURTHER ORDERED that this proceeding is terminated as to all
parties; and
FURTHER ORDERED that, as timely requested by the parties
(Paper 24), the parties’ settlement agreement (Exhibit 2025) shall be treated
as business confidential information and be kept separate from the file of
U.S. Patent No. RE47,906 E and made available only under the provisions
of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
IPR2021-00624
Patent RE47,906 E

4
PETITIONER:

Inge A. Osman
Matthew J. Moore
Clement Naples
Lisa K. Nguyen
LATHAM & WATKINS LLP
inge.osman@lw.com
matthew.moore@lw.com
clement.naples@lw.com
lisa.nguyen@lw.com

PATENT OWNER:

Jason D. Eisenberg
Robert Greene Sterne
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jasone-PTAB@sternekessler.com
rsterne-PTAB@sternekessler.com
PTAB@sternekessler.com