`
`IN THE 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 No. 9,320,122 B2
`__________
`
`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION AND TO MAINTAIN SAID
`AGREEMENT SEPARATE FROM THE PUBLIC FILE PURSUANT TO 35
`U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`
`
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`
`
`
`
`
`
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s
`
`authorization of December 4, 2018, Petitioner Prime Wire & Cable, Inc.
`
`(“Petitioner”) and Patent Owner Cantigny Lighting Control, LLC (“Patent Owner”)
`
`jointly request to treat as business confidential information the true and complete
`
`copy of the Settlement Agreement (Confidential Exhibit 2001) between the parties
`
`and licensee of U.S. Patent No. 9,320,122, Jasco Products Company, as referenced
`
`in the parties’ Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R.
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`§§ 42.72 and 42.74, filed concurrently herewith.
`
`35 U.S.C. § 317(b) provides that:
`
`At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential 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.
`
`Likewise, 37 C.F.R. § 42.74(c) provides that:
`
`A party to a settlement may request that the settlement be treated as
`business confidential information and be kept separate from the files of
`an involved patent or application. The request must be filed with the
`settlement. If a timely request is filed, the settlement shall only be
`available:
`
`(1) To a Government agency on written request to the Board; or
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`1
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`
`
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`(2) To any other person upon written request to the Board to make the
`settlement agreement available, along with the fee specified in §
`42.15(d) and on a showing of good cause.
`
`The present request, which is being filed contemporaneously with the
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`Settlement Agreement, is timely and in accordance with the foregoing authority.
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`Therefore, the parties request that the Settlement Agreement (Confidential Exhibit
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`2001) (i) be treated as business confidential information, (ii) be maintained separate
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`from the publicly available file of the involved patent, and (iii) shall be made
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`available only to Federal Government agencies on written request, or to persons
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`showing good cause on written request, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c).
`
`Dated: December 5, 2018
`
`
`
`
`
`Respectfully submitted,
`FITCH, EVEN, TABIN & FLANNERY LLP
`By: /Timothy P. Maloney/
`
`
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`Attorney for Patent Owner
`
`BUCHE & ASSOCIATES, P.C.
`
`By: /John K. Buche/
`John K. Buche
`Reg. No. 46,584
`jbuche@buchelaw.com
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`
`2
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`
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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies in accordance with 37 C.F.R. § 42.6(e) that on
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`December 5, 2018, a copy of the foregoing JOINT REQUEST TO FILE
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`SETTLEMENT
`
`AGREEMENT
`
`AS
`
`BUSINESS
`
`CONFIDENTIAL
`
`INFORMATION AND TO MAINTAIN SAID AGREEMENT SEPARATE FROM
`
`THE PUBLIC FILE PURSUANT TO 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`was served by e-mail on counsel for Petitioner at the following e-mail addresses:
`
`John K. Buche, jbuche@buchelaw.com
`Bryce A. Johnson, bjohnson@buchelaw.com
`
`Petitioner has agreed to electronic service.
`
`
`
`By: /Timothy P. Maloney/
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`
`
`
`
`
`Dated: December 5, 2018
`
`120 South LaSalle Street
`Suite 2100
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
`3
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`
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