`Tel: 571-272-7822
`
`Paper 17
`Entered: March 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERATION BRANDS LLC,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2016-01478 (Patent 8,201,968 B2)
`Case IPR2016-01546 (Patent 8,967,844 B2)1
`____________
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Without Prejudice Motions to Terminate the Proceedings
`37 C.F.R. § 42.72
`
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2016-01478 (Patent 8,201,968 B2)
`IPR2016-01546 (Patent 8,967,844 B2)
`
`On March 13, 2017, the parties attempted to file, in both of the instant
`cases, a joint motion to terminate the trial on the basis of a settlement
`reached by the parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The
`parties also filed a copy of their written settlement agreement, a collateral
`settlement agreement, and a separate request to treat the settlement papers as
`business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). See Case IPR2016-01478, Papers 10–13; Case IPR2016-01546,
`Papers 13–16. We authorized the joint motions to terminate in an email
`dated March 13, 2017. Because the joint motions are deficient in a number
`of ways, we deny the motions to terminate without prejudice.
`At the outset, we note that the document in Case IPR2016-01546
`listed as the joint motion to terminate is actually a second copy of the
`parties’ request to treat the settlement papers as confidential information.
`See Case IPR2016-01546, Paper 13. As such, no motion to terminate has
`been filed in that case.
`In both cases, the parties have filed a collateral agreement in addition
`to the main settlement agreement. See Case IPR2016-01478, Papers 13;
`Case IPR2016-01546, Papers 16. This collateral agreement contains a
`redaction. Therefore, contrary to the parties’ representations, the parties
`have not complied with the requirement that they provide a “true copy” of its
`settlement papers in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b). We additionally observe that the collateral agreement is not
`mentioned or explained in either the motion to terminate or the motion to
`treat the settlement papers as confidential information.
`Finally, we remind the parties that settlement agreements are
`considered evidence that is typically filed in the form of an exhibit. See
`
`2
`
`
`
`
`IPR2016-01478 (Patent 8,201,968 B2)
`IPR2016-01546 (Patent 8,967,844 B2)
`
`37 C.F.R. § 42.63(a). Any further filings in these cases shall treat settlement
`agreements accordingly.
`In order to facilitate the re-filing of the motions to terminate, we
`expunge the papers the parties sought to keep confidential (i.e., the
`settlement agreement and the collateral settlement agreement). See
`37 C.F.R. § 42.7(a).
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Papers 11 and 13 in Case IPR2016-01478 and
`Papers 14 and 16 in Case IPR2016-01546 Papers 16 are expunged;
`FURTHER ORDERED that the motions for termination of these
`proceedings, as well as the requests to file the settlement papers as business
`confidential information, are denied without prejudice;
`FURTHER ORDERED that the parties are authorized to re-file
`corrected joint motions to terminate these proceedings;
`FURTHER ORDERED that the corrected joint motions shall indicate
`and explain the presence of any collateral settlement agreements;
`FURTHER ORDERED that the corrected joint motions must be
`accompanied by a true copies of the parties’ settlement agreements as
`required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b); and
`FURTHER ORDERED that the copies of the parties’ settlement
`agreements shall be filed as exhibits and shall be free of redactions.
`
`
`
`3
`
`
`
`
`IPR2016-01478 (Patent 8,201,968 B2)
`IPR2016-01546 (Patent 8,967,844 B2)
`
`PETITIONER:
`
`Wayne Keown
`David Robertson
`VERRILL DANA, LLP
`wkeown@verrilldana.com
`drobertson@verrilldana.com
`
`PATENT OWNER:
`
`Eric Hayes
`Garret Leach
`Eugene Goryunov
`Kyle Kantarek
`KIRKLAND & ELLIS LLP
`eric.hayes@kirkland.com
`garret.leach@kirkland.com
`egoryunov@kirkland.com
`kyle.kantarek@kirkland.com
`
`
`
`4
`
`
`
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