Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 35
`Entered: May 27, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETNUT LTD.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`_______________
`
`IPR2021-00465
`Patent 9,742,866 B2
`____________
`
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Settlement After Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 35
`Entered: May 27, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETNUT LTD.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`_______________
`
`IPR2021-00465
`Patent 9,742,866 B2
`____________
`
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Settlement After Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`IPR2021-00465
`Patent 9,742,866 B2
`
`
`I. BACKGROUND
`NetNut Ltd. (“Petitioner”) filed a Petition (Paper 2) requesting inter
`partes review of claims 15–20, 23, 24, 27, and 28 (the “challenged claims”)
`of U.S. Patent No. 9,742,866 B2 (Ex. 1001, “the ’866 patent”), Patent
`Owner, Bright Data, Inc. (formerly known as Luminati Networks Ltd.,),
`filed a Preliminary Response (Paper 8). The Board instituted inter partes
`review as to all challenged claims of the ’866 patent and all of the asserted
`grounds of unpatentability stated in the Petition. Paper 11.
`After institution, with Board authorization, Petitioner and Patent
`Owner filed a “Joint Motion to Terminate Due to Settlement” (Paper 33,
`“Joint Motion”). The Joint Motion seeks termination of this proceeding and
`related proceeding IPR2021-00458. Id. at 1. The parties represent that “the
`Parties have settled their disputes and no other petitioner remains.” Id. The
`parties maintain that there is good cause for granting the Joint Motion. Id.
`at 3–7.
`The Joint Motion urges us to terminate this proceeding without
`deciding the pending, non-contingent Revised Motion to Amend (Paper 20),
`and that we “withdraw” Petitioner’s opposition to that motion (Paper 22).
`Joint Motion, 8.
`Finally, in a separate motion, the parties jointly request that the
`Settlement Agreement (Ex. 2031) be treated as confidential business
`information and kept separate from the ’866 patent files, pursuant to 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 34, 2.
`II. DISCUSSION
`Under 37 C.F.R. §§ 42.5 and 42.72, the Board may terminate a trial
`without rendering a final written decision, where appropriate, including
`
`2
`
`
`
`IPR2021-00465
`Patent 9,742,866 B2
`
`pursuant to a joint request under 35 U.S.C. §§ 317(a).
`The parties certify that they have complied fully with 37 C.F.R.
`§ 42.74(b) by filing the written Settlement Agreement, reflected in Exhibit
`2031, with the Board, that the agreement reflects a final settlement and
`resolution of all disputes relating to the ’866 patent between the parties, and
`that there are no other collateral agreements or understandings made in
`connection with, or in contemplation of, the termination sought. Joint
`Motion, 2.
`The parties have also filed a May 17, 2022, order of the district court
`in Bright Data Ltd, v. NetNut Ltd., Case No. 2:21-cv-00225-JRG-RSP (E.D.
`Tex.), dismissing with prejudice all pending claims and causes of action in
`that case. Ex. 2030.
`We find that for the reasons given by the parties, there is good cause
`to grant the motion to terminate this proceeding. The Board has not held a
`hearing or determined the merits of this proceeding or the merits of the
`pending motion to amend. See Kokusai Elect. Corp. v. ASM IP Holding
`B.V., Case IPR2018-01151, Paper 38 (PTAB Aug. 20, 2019) (informative)
`(motion to terminate granted without reaching decision on motion to
`amend). “There are strong public policy reasons to favor settlement between
`the parties to a proceeding. . . . The Board expects that a proceeding will
`terminate after the filing of a settlement agreement, unless the Board has
`already decided the merits of the proceeding.” Consolidated Trial Practice
`Guide 86 (November 2019).1
`We also find that there is good cause for granting the joint request to
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated).
`
`3
`
`
`
`IPR2021-00465
`Patent 9,742,866 B2
`
`file the Settlement Agreement as confidential. Paper 34. We find that the
`Settlement Agreement contains sensitive business confidential information
`that would substantially harm their business interests if publicly disclosed.
`Id. at 2.
`We deny the request to withdraw Petitioner’s opposition to the revised
`motion to amend (Paper 22). We find that the interest of the public in
`having access to a complete record in this case outweighs any interest
`Petitioner might have in having this document expunged.
`
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the parties’ Joint Motion to Terminate is granted and
`this case is terminated;
`FURTHER ORDERED that the parties’ Joint Request to File
`Settlement Agreement as Business Confidential Information (Paper 34) is
`granted, and Exhibit 2031 shall remain sealed and kept separate from the
`files of the ’866 patent, consistent with 37 C.F.R. § 42.74(b); and
`FURTHER ORDERED that Petitioner’s request to withdraw Paper 22
`is denied.
`
`
`
`
`
`
`4
`
`
`
`IPR2021-00465
`Patent 9,742,866 B2
`
`For PETITIONER:
`
`Ronald Abramson
`M. Michael Lewis
`Ari J. Jaffess
`LISTON ABRAMSON LLP
`ron.abramson@listonabramson.com
`michael.lewis@listonabramson.com
`ari.jaffess@listonabramson.com
`
`
`For PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O'Brien
`RUYAKCHERIAN LLP
`tomd@ruyakcherian.com
`elizabetho@ruyakcherian.com
`
`5
`
`
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