`571-272-7822
`
`
`
`
`Paper No. 20
`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.
`_______________
`
`IPR2021-01492
`Patent 10,257,319 B2
` ____________
`
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`ORDER
`Dismissing Petitioner From the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`
`I. BACKGROUND
`NetNut Ltd. (“Petitioner”) filed a Petition (Paper 2) requesting inter
`partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 (the “challenged
`claims”) of U.S. Patent No. 10,257,319 B2 (Ex. 1001, “the ’319 patent”).
`Patent Owner, Bright Data Ltd., filed a Preliminary Response (Paper 9).
`The Board instituted inter partes review as to all challenged claims of the
`’319 patent and all of the asserted grounds of unpatentability stated in the
`Petition. Paper 12.
`After institution, with Board authorization, Petitioner and Patent
`Owner filed a “Joint Motion to Terminate as to Petitioner” (Paper 17, “Joint
`Motion”). The Joint Motion seeks termination of this proceeding and related
`proceeding IPR2021-01493 as to Petitioner NetNut Ltd. due to settlement.
`Id. at 1. The parties represent that “the Parties have settled their disputes,”
`and because “the Board has not made a decision on the merits,” the Board
`must terminate as to Petitioner. Id.
`In a separate motion, the parties jointly request that the Settlement
`Agreement (Ex. 2019) be treated as confidential business information and
`kept separate from the ’319 patent files, pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c). Paper 18, 2.
`II. DISCUSSION
`Under 35 U.S.C. 317(a), “[a]n inter partes review instituted under this
`chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.”
`
`
`
`2
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`
`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
`2019, with the Board, that the agreement reflects a final settlement and
`resolution of all disputes between the parties relating to the ’319 patent, and
`that there are no other collateral agreements or understandings made in
`connection with, or in contemplation of, the termination sought. Id. at 2.
`The parties have also filed a May 15, 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. 2018.
`We find that for the reasons given by the parties, we grant the motion
`to terminate Petitioner NetNut Ltd. in this proceeding. “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
`file the Settlement Agreement as confidential. Paper 18. We find that the
`Settlement Agreement contains sensitive business confidential information
`that would substantially harm their business interests if publicly disclosed.
`Id. at 2.
`
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated).
`
`3
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`
`ORDERED that the parties’ Joint Motion to Terminate as to Petitioner
`is granted and Petitioner NetNut Ltd. is dismissed as Petitioner; and
`FURTHER ORDERED that the parties’ Joint Request to File
`Settlement Agreement as Business Confidential Information (Paper 18) is
`granted, and Exhibit 2019 shall remain sealed and kept separate from the
`files of the ’319 patent, consistent with 37 C.F.R. § 42.74(b).
`
`
`
`FOR PETITIONER:
`Ronald Abramson
`Mord Lewis
`Ari 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@ruyakcherican.com
`
`
`4
`
`
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