`571-272-7822
`
`
`Paper No. 8
`
`Entered: December 4, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRIME WIRE & CABLE, INC.,
`Petitioner,
`
`v.
`
`CANTIGNY LIGHTING CONTROL, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01592
`Patent 9,320,122 B2
`____________
`
`
`Before SALLY C. MEDLEY, DENISE M. POTHIER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`POTHIER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`
`IPR2018-01592
`Patent 9,320,122 B2
`
`
`
`Prime Wire & Cable, Inc. (Petitioner)1 filed a Petition for inter partes
`review of claims 1–20 of U.S. Patent No. 9,320,122 B2 (Ex. 1001, “the ’122
`patent”). Paper 3 (“Pet.”). To date, Cantigny Lighting Control, LLC
`(“Patent Owner”)2 has not filed a Preliminary Response. On November 26,
`2018, Patent Owner’s counsel informed the Board that the parties have
`reached a settlement and seeks authorization to file (1) a joint motion to
`terminate the proceeding and (2) a settlement agreement as business
`confidential information pursuant to 35 U.S.C. § 317.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The rule governing
`settlement indicates that any agreement between the parties made in
`connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74. Based on the
`facts of this proceeding, the parties are authorized to file a joint motion to
`terminate this proceeding.
`The joint motion to terminate must include a brief explanation as to
`why termination of the proceeding is appropriate, and also should update the
`Board as to the status of any other matters involving the patent at issue. The
`parties also must file, as an exhibit, a true copy of their settlement agreement
`
`
`1 Petitioner, Prime Wire & Cable, Inc., identifies itself as a real party-in-
`interest and identifies its parent company as “YCF-BonEagle Co., Ltd.
`(‘YFC-Taiwan’), a limited liability company organized in Taiwan.” Paper 3,
`12.
`2 Patent Owner, Cantigny Lighting Control, LLC, identifies (1) itself and (2)
`Jasco Products Company, LLC as real parties-in-interest. Paper 6, 1.
`2
`
`
`
`IPR2018-01592
`Patent 9,320,122 B2
`
`
`to terminate the proceeding. A redacted version of the settlement agreement
`will not be accepted as a true copy of the settlement agreement. Any request
`that the agreement be treated as business confidential information and be
`kept separate from the file of the involved patent must be filed with the
`settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to FAQ
`G2 on the Board’s website page at
`
` for instructions on how to file their settlement agreement as
`confidential (e.g., uploading as “Parties and Board Only”) in PTAB E2E.
`The joint motion to terminate and the settlement agreement shall be
`filed no later than December 12, 2018. Accordingly, it is
`ORDERED that the parties are authorized to file a joint motion to
`terminate the proceeding;
`FURTHER ORDERED that the joint motion is due no later than
`December 12, 2018;
`FURTHER ORDERED that the joint motion shall be accompanied by
`a true copy of the settlement agreement as required by 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that the parties may request that the
`settlement agreement be treated as business confidential information as
`specified by 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that any confidential settlement agreement
`must be filed electronically in accordance with the instructions provided on
`the Board’s website (e.g., uploading as “Parties and Board Only”).
`
`3
`
`
`
`
`
`IPR2018-01592
`Patent 9,320,122 B2
`
`
`For PETITIONER:
`John K. Buche
`Bryce A. Johnson
`BUCHE & ASSOCIATES, P.C.
`jbuche@buchelaw.com
`bjohnson@buchelaw.com
`
`For PATENT OWNER:
`Timothy Maloney
`Karen Wang
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`tim@fitcheven.com
`kwang@fitcheven.com
`phenkelmann@fitcheven.com
`
`
`
`4
`
`
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