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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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`____________
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`DTN, LLC.
`Petitioner,
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`v.
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`FARMS TECHNOLOGY LLC
`Patent Owner
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`____________
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`Case IPR2018-01412
`Patent No. 7,991,685
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`Case IPR2018-01525
`Patent No. 7,742,979
`____________
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`PETITIONER AND PATENT OWNER’S JOINT MOTION
`TO EXPUNGE COLLATERAL AGREEMENTS
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`Pursuant to 37 C.F.R. § 42.56 and the Board’s authorization granted during
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`the conference call conducted May 15, 2019, Petitioner DTN, LLC (“Petitioner”)
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`and Patent Owner Farms Technology LLC (“Patent Owner”) (collectively, the
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`“Parties”) hereby move the Patent Trial and Appeal Board to expunge Exhibits 2008
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`and 2009 from the records of the United States Patent & Trademark Office.
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`After reviewing the Parties’ Settlement Agreement (Ex. 1012) filed in support
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`of the Joint Motions to Terminate IPR2018-01412 and IPR2018-01525, the Board
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`requested that the Parties submit copies of two collateral agreements referenced
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`therein. While the Parties respectfully submit that these two collateral agreements
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`do not fall within the scope of 35 U.S.C. § 317 and 37 C.F.R. § 42.74 for the reasons
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`discussed below, the Parties agreed to file confidential copies of the First Collateral
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`Agreement (Ex. 2008) and the Second Collateral Agreement (Ex. 2009) that are
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`referenced in the Parties’ Settlement Agreement (Ex. 1012) so that the Board could
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`review these documents, and the Parties have now done so.
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`The First and Second Collateral Agreements (Exs. 2008, 2009) are not the
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`type of agreements that are required to be “filed in the Office before the termination
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`of the inter partes review,” 35 U.S.C. § 317(b), or to be “filed with the Board before
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`the termination of the trial,” 37 C.F.R. § 42.74(b). As an initial matter, these two
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`collateral agreements are not agreements “between the patent owner and a
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`petitioner” or “between the parties,” which places them outside the scope of 35
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`1
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`U.S.C. § 317 and 37 C.F.R. § 42.74. Moreover, neither of the collateral agreements
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`was “made in connection with, or in contemplation of, the termination” of the IPR
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`proceedings, as recited in the applicable statutory and regulatory provisions. Rather,
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`these collateral agreements are directed to settlement of matters unrelated to the
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`Patent Owner or the pending IPR proceedings. Since the Office is not required to
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`maintain copies of these collateral agreements under 35 U.S.C. § 317 and 37 C.F.R.
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`§ 42.74, the Parties move the Board to expunge the First and Second Collateral
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`Agreements (Exs. 2008, 2009) from the records pursuant to 37 C.F.R. § 42.56.
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`A.
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`Section 317 Does Not Apply Because the Collateral Agreements
`Are Not “Between the Patent Owner and a Petitioner”
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`As an initial matter, Section 317 applies only to agreements and
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`understandings “between the patent owner and a petitioner.” 35 U.S.C. § 317(b).
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`The relevant portion of the statute reads:
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`Any agreement or understanding between the patent
`owner and a petitioner,
`including any collateral
`agreements
`referred
`to
`in
`such
`agreement or
`understanding, made
`in connection with, or
`in
`contemplation of, the termination of an inter partes review
`under this section shall be in writing and a true copy of
`such agreement or understanding shall be filed in the
`Office before the termination of the inter partes review as
`between the parties.
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`35 U.S.C. § 317(b). With regard to the phrase “any collateral agreements referred
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`to in such agreement or understanding,” Congress’ use of the word “including”
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`preceding that phrase makes clear that the statute is referring to collateral agreements
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`2
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`“between the patent owner and a petitioner.” The word “including” signifies that
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`the phrase “any collateral agreements referred to in such agreement or
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`understanding” is a subcategory of the preceding phrase “[a]ny agreement or
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`understanding between the patent owner and a petitioner.” If Congress had intended
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`a broader scope for § 317 (i.e., encompassing collateral agreements beyond those
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`“between the patent owner and a petitioner”), it could have simply used the word
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`“and” rather than the word “including.” But Congress did not do so, limiting § 317
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`to agreements and understandings “between the patent owner and a petitioner.”
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`Furthermore, under common principles of statutory construction, the general
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`term “any collateral agreements” should not be read to broaden the more specific
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`term “agreement or understanding between the patent owner and a petitioner” that
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`immediately precedes it. In similar situations, the Supreme Court has applied the
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`principle of ejusdem generis – that “a general statutory term should be understood
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`in light of the specific terms that surround it” – to adopt the narrower meaning of a
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`seemingly broad “catchall phrase.” See, e.g., Hughey v. U.S., 495 U.S. 411, 418-19
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`(1990).
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`The Office’s own regulations have interpreted § 317 as being limited to
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`agreements and understandings between the patent owner and the IPR petitioner. In
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`particular, the applicable rule states: “Any agreement or understanding between the
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`parties made in connection with, or in contemplation of, the termination of a
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`3
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`proceeding shall be in writing and a true copy shall be filed with the Board before
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`the termination of the trial.” 37 C.F.R. § 42.74(b) (emphasis added). On its face,
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`this rule is limited to agreements/understandings “between the parties” and, thus,
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`places no requirements on agreements involving third parties to the IPR (e.g., an
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`agreement between an IPR petitioner and a third party not involved in the IPR).
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`
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`Neither the First Collateral Agreement (Ex. 2008) nor the Second Collateral
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`Agreement (Ex. 2009) is “between the patent owner and a petitioner.” The First
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`Collateral Agreement (Ex. 2008) is between Petitioner and a third party individual
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`(who is not the patent owner). The Second Collateral Agreement (Ex. 2009) is
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`between Petitioner, a third party entity (who is not the patent owner), and a third
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`party individual (who is also not the patent owner). As these agreements are not
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`“between the patent owner and a petitioner,” 35 U.S.C. § 317(b), or “between the
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`parties” to the IPR, 37 C.F.R. § 42.74(b), the filing of the First and Second Collateral
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`Agreements (Exs. 2008, 2009) is not a prerequisite to the termination of IPR2018-
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`01412 and IPR2018-01525. Nor is the Office required to keep copies of the First
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`and Second Collateral Agreements (Exs. 2008, 2009).
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`B.
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`Section 317 Does Not Apply Because the Collateral Agreements
`Were Not “Made in Connection with, or in Contemplation of, the
`Termination of an Inter Partes Review”
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`Additionally, Section 317 applies only to agreements and understandings
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`“made in connection with, or in contemplation of, the termination of an inter partes
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`4
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`review.” 35 U.S.C. § 317(b); see also 37 C.F.R. § 42.74(b) (containing similar
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`language). The First Collateral Agreement (Ex. 2008) does not even mention
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`IPR2018-01412 or IPR2018-01525. While the Second Collateral Agreement (Ex.
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`2009) refers to these IPRs in its introductory “whereas” clauses, none of the
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`obligations undertaken in the Second Collateral Agreement (Ex. 2009) requires or
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`depends upon the termination of either IPR2018-01412 or IPR2018-01525 in any
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`way. In other words, the termination (or non-termination) of these IPRs will have
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`no effect on the First and Second Collateral Agreements (Exs. 2008, 2009). For this
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`additional reason, the First and Second Collateral Agreements (Exs. 2008, 2009) are
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`not covered by 35 U.S.C. § 317 or 37 C.F.R. § 42.74.
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`C. Conclusion
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`The First and Second Collateral Agreements (Exs. 2008, 2009) are not
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`agreements “between the patent owner and a petitioner” or “between the parties.”
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`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(b). And neither of these agreements was
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`“made in connection with, or in contemplation of, the termination” of the IPR
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`proceedings. Id. For each of these reasons, independently, the filing of the First and
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`Second Collateral Agreements (Exs. 2008, 2009) is not required by 35 U.S.C. § 317
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`or by 37 C.F.R. § 42.74. As such, the Parties respectfully request that the Board
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`expunge Exhibits 2008 and 2009 from the records of the Office due to the
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`confidential information contained in those exhibits. 37 C.F.R. § 42.56.
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`5
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`Respectfully submitted,
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`/ J. David Cabello /
`J. David Cabello
`Registration No. 31,455
`Lead Counsel for Petitioner
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`DATED: May 21, 2019
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` /
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` Joshua P. Larsen /
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`Joshua P. Larsen
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`Registration No. 62,761
`Lead Counsel for Patent Owner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that, on this 21st day
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`of May 2019, I caused a true and correct copy of the foregoing document to be served
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`via e-mail (as agreed in the Service Information section of the Petition) on the
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`following counsel of record for the Petitioner:
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`David Cabello
`DCabello@BlankRome.com
`James Hall
`JHall@BlankRome.com
`Stephen Zinda
`SZinda@BlankRome.com
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`/ Joshua P. Larsen /
`Joshua P. Larsen
`Reg. No. 62,761
`Lead Counsel for Patent Owner
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`7
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