`
`Filed on behalf of:
`Petitioner
`
`By: Bryan C. Smith (Lead Counsel)
`George R. McGuire (Back-up Counsel)
`
`Paper No. ____
`Date: January 18, 2023
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SIGNIFY NORTH AMERICA CORPORATION,
`
`Petitioner,
`
`v.
`
`BLACKBIRD TECH LLC,
`
`Patent Owner.
`
`_______________
`
`Case IPR2023-00054
`
`Patent 7,086,747
`
`
`_______________
`PETITIONER’S UNOPPOSED MOTION TO DISMISS PETITION FOR
`INTER PARTES REVIEW
`
`
`1
`
`
`
`IPR2023-00054 (Patent 7,086,747)
`Petitioner’s Unopposed Motion to Dismiss Petition for Inter Partes Review
`
`
`Pursuant to 37 C.F.R § 42.74 and the authorization provided by the Board
`
`email of January 18, 2023, Petitioner SIGNIFY NORTH AMERICA
`
`CORPORATION (“Petitioner”) requests termination of the proceeding and
`
`dismissal of the Petition filed in this proceeding, IPR2023-00054, directed to U.S.
`
`Patent No. 7,086,747 (the “’747 Patent”). The parties have met and conferred and
`
`Patent Owner does not oppose this motion.
`
`I.
`
`CERTIFICATION
`
`Petitioner submits a true copy of any agreement or understanding
`
`(Exhibit 1034) between Petitioner and Patent Owner made in connection with, or in
`
`contemplation of, the dismissal of the Petition for the proceeding under 37 CFR §
`
`42.74(b) with this motion. Petitioner certifies that there are no other agreements, oral
`
`or written, between the parties made in connection with, or in contemplation of, the
`
`termination of this inter partes review proceeding.
`
`II.
`
`STATUS OF RELATED PROCEEDINGS
`
`Petitioner and Patent Owner have resolved their disputes regarding the ’747
`
`Patent, including both in this proceeding and assertion of the ’747 Patent in related
`
`district court litigation, Blackbird Tech, LLC d/b/a Blackbird v. Signify North
`
`America Corporation, 3:21-CV-18463 (D.N.J.). The parties do not anticipate further
`
`litigation between them concerning the ’747 Patent.
`
`2
`
`
`
`IPR2023-00054 (Patent 7,086,747)
`Petitioner’s Unopposed Motion to Dismiss Petition for Inter Partes Review
`
`III. RELIEF REQUESTED
`
`As authorized by the Board, Petitioner is contemporaneously filing: (i) this
`
`motion to dismiss the Petition; (ii) a true copy of any agreement or understanding
`
`(Exhibit 1034) between Petitioner and Patent Owner made in connection with, or
`
`in contemplation of, the requested dismissal of the Petition; and (iii) a joint request
`
`to treat the agreement as business confidential information and keep the agreement
`
`(Exhibit 1034) separate from the file of the involved patent, pursuant to 37 C.F.R.
`
`§ 42.74(c).
`
`Petitioner requests that the Board terminate this proceeding in its entirety.
`
`Termination is appropriate at this stage and in view of a settlement between
`
`Petitioner and Patent Owner. See 37 C.F.R. § 42.71(a) (“The Board ... may grant,
`
`deny, or dismiss any petition”). See also RSPCT Basketball Tech., Ltd. v. Pillar
`
`Vision, Inc., IPR2021-00006, Paper 8 (PTAB Jan. 5, 2021); Palo Alto Networks, Inc.
`
`v. Proven Networks, LLC, IPR2021-00596, Paper 8 (PTAB Aug. 10, 2021)
`
`(terminating the proceeding and dismissing the petition in view of settlement prior
`
`to issuance of institution decision). Good cause exists to terminate this proceeding
`
`because (1) Petitioner and Patent Owner have resolved their disputes regarding the
`
`’747 Patent; (2) this proceeding is still at an early stage because the Office has not
`
`yet decided whether to institute trial; and (3) terminating the proceeding now would
`
`3
`
`
`
`IPR2023-00054 (Patent 7,086,747)
`Petitioner’s Unopposed Motion to Dismiss Petition for Inter Partes Review
`
`thus serve the interests of preservation of Board resources as well as the mutual
`
`interest of the parties.
`
`Respectfully submitted,
`
`Date: January 18, 2023
`
`/Bryan C. Smith/
`Bryan C. Smith (Lead Counsel)
`Registration No. 59,767
`
`
`
`4
`
`
`
`IPR2023-00054 (Patent 7,086,747)
`Petitioner’s Unopposed Motion to Dismiss Petition for Inter Partes Review
`
`
`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
`LIMITATION, TYPEFACE REQUIREMENTS, AND TYPE STYLE
`REQUIREMENTS
`
`1.
`
`This paper complies with the page limitation of 15 pages excluding the
`
`parts exempted by 37 C.F.R. § 42.24.
`
`2.
`
`This paper complies with the general format requirements of 37 C.F.R.
`
`§ 42.6 and has been prepared using Microsoft® Word 2016 in 14 point Times New
`
`Roman.
`
`Date: January 18, 2023
`
`
`
`
`
`Respectfully submitted,
`
`/Bryan C. Smith/
`Bryan C. Smith (Lead Counsel)
`Registration No. 59,767
`
`
`
`5
`
`
`
`IPR2023-00054 (Patent 7,086,747)
`Petitioner’s Unopposed Motion to Dismiss Petition for Inter Partes Review
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 18th day of
`
`January, 2023, I caused to be served a true and correct copy of the foregoing
`
`PETITIONER’S UNOPPOSED MOTION TO DISMISS PETITION FOR
`
`INTER PARTES REVIEW by e-mail on the following designated counsel of
`
`record:
`
`
`
`
`
`
`Wendy Verlander
`VERLANDER LLP
`200 Baker Avenue, Suite 303
`Concord, MA 01742
`Telephone: (978) 707-4450
`wverlander@verlanderllp.com
`
`
`Walter D. Davis, Jr.
`DAVIDSON, BERQUIST, JACKSON
`& GOWDEY, L.L.P.
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7709
`wdavis@davidsonberquist.com
`
`Counsel for Patent Owner
`BLACKBIRD TECH LLC
`
`
`
`
`
`
`
`/Bryan C. Smith/
`Bryan C. Smith (Lead Counsel)
`Registration No. 59,767
`
`
`
`6
`
`
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