Ultravision Technologies, LLC

Patent Trials and Appeals BoardOct 8, 2021

IPR2020-01638 (P.T.A.B. Oct. 8, 2021)

Trials@uspto.gov Paper 19 Tel: 571-272-7822 Entered: October 8, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ACUITY BRANDS LIGHTING, INC., Petitioner, v. ULTRAVISION TECHNOLOGIES, LLC, Patent Owner. ____________ IPR2020-01638 Patent 10,223,946 B2 ____________ Before HUBERT C. LORIN, BRIAN J. McNAMARA, and SCOTT A. DANIELS Administrative Patent Judges. DANIELS, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-01638 Patent 10,223,946 B2 2 On September 14, 2021, with Board authorization, Petitioner and Patent Owner (collectively “the Parties”) filed a Joint Motion to Terminate Pursuant to 35 U.S.C. § 317(a) the above-captioned proceeding. Paper 17 (“Joint Motion”). Along with the Joint Motion, the Parties filed a copy of their confidential Settlement Agreement (Ex. 1025), as well as a Joint Request to treat the Settlement Agreement as business confidential information (Paper 18, “Joint Request”). See 37 C.F.R. § 42.74(c) (a party to a settlement may request that the settlement agreement be treated as business confidential and be kept separate from the patent file). In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek termination of the above-identified inter partes review proceeding, and that they have filed a true copy of the Settlement Agreement as Exhibit 1025. Joint Motion 1. The Parties further represent that besides the Settlement Agreement “[t]here are no collateral agreements or understandings made in connection with, or in contemplation of, the dismissal of the Petition,” and that “the parallel litigation has been dismissed.” Id. at 1–2. This proceeding is at a sufficiently early stage where Petitioner has not filed a Reply and we have not rendered a final decision on the merits. In view of the early stage of the proceeding and the settlement between the Parties, we determine that good cause exists to dismiss the petition and terminate the proceeding with respect to the Parties. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). The parties also ask that the Settlement Agreement be treated as business confidential information and be kept separate from the file of the challenged patent. Joint Request 2. We determine that it is appropriate to IPR2020-01638 Patent 10,223,946 B2 3 treat the Confidential Agreement as business confidential information, and to keep that document separate from the file of the challenged patent, pursuant to 37 C.F.R. § 42.74(c). For the foregoing reasons, it is: ORDERED that the Joint Motion is granted and this proceeding is terminated with respect to Petitioner and Patent Owner; FURTHER ORDERED that the Joint Request that the confidential Settlement Agreement (Ex. 1025) be treated as business confidential information, to be kept separate from the patent file, is granted in this proceeding. IPR2020-01638 Patent 10,223,946 B2 4 PETITIONER: D. Joseph English Glenn Richeson DUANE MORRIS LLP djenglish@duanemorris.com gdricheson@duanemorris.com PATENT OWNER: Peter Lambrianakos Vincent J. Rubino Joseph M. Mercadante Enrique W. Iturralde FABRICANT LLP plambrianakos@fabricantllp.com vrubino@fabricantllp.com jmercadante@fabricantllp.com eiturrald@fabricantllp.com