`Tel: 571-272-7822
`
`Paper 20
`Entered: March 16, 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)
`____________
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Termination of the Trials
`37 C.F.R. § 42.72
`
`
`
`IPR2016-01478 (Patent 8,201,968 B2)
`IPR2016-01546 (Patent 8,967,844 B2)
`
`On March 15, 2017, the parties filed, in each of the instant cases, an
`amended 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 copy of a
`collateral settlement agreement, and an amended request to treat the
`settlement agreements as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).1 The main settlement agreement refers to
`the collateral agreement, which relates to Petitioner’s exclusive engagement
`of an expert witness. Paper 15, 2.
`The parties’ joint motions to terminate were filed prior to the oral
`hearings in these cases, and the Board has not made a final decision on the
`merits in any of these cases. See 35 U.S.C. § 317(a). Although the parties’
`underlying district court litigation had been consolidated with several other
`cases that remain pending, the parties represent that their case has been
`settled and dismissed with prejudice. Paper 15, 2–3. The parties also
`represent that they have settled their dispute. Id. at 2. Given these facts, we
`determine that it is appropriate to terminate the trials, without rendering a
`final written decision, under 37 C.F.R. § 42.72. The oral hearings in both of
`the instant cases are canceled.
`“At the request of a party to the proceeding, the [settlement]
`agreement or understanding shall be treated as business confidential
`
`
`1 See Case IPR2016-01478, Papers 15, 16, Exs. 1018, 1019; Case IPR2016-
`01546, Papers 18, 19, Exs. 1019, 1020. Because the papers are nearly
`identical in each case, we will refer to those filed in Case IPR2016-01478
`for convenience. Our Order of March 14, 2017, authorized the amended
`joint motions to terminate so the parties could address certain deficiencies in
`earlier filings. See Paper 14.
`
`2
`
`
`
`
`IPR2016-01478 (Patent 8,201,968 B2)
`IPR2016-01546 (Patent 8,967,844 B2)
`
`information, shall be kept separate from the file of the involved patents, and
`shall be made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause.” 35 U.S.C. § 317(b).
`After reviewing the parties’ settlement agreement and collateral settlement
`agreement, we find that these papers contain confidential business
`information regarding the terms of settlement. We determine that good
`cause exists to treat these papers as business confidential information
`pursuant to 35 U.S.C. § 317(b).
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ joint request to treat their settlement
`agreement and collateral settlement agreement (Case IPR2016-01478,
`Exs. 1018, 1019; and Case IPR2016-01546, Exs. 1019, 1020) as business
`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`and to continue their designation as “Parties and Board Only” in the Patent
`Trial and Appeal Board End to End (PTAB E2E) system is granted;
`FURTHER ORDERED that the parties’ settlement agreement be kept
`separate from the files of U.S. Patent No. 8,201,968 B2 and U.S. Patent No.
`8,967,844 B2, and made available only to Federal Government agencies on
`written request, or to any person on a showing of good cause; and
`FURTHER ORDERED that the joint motions to terminate the instant
`trials are granted and the trials are hereby terminated.
`
`
`
`
`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
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
