Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: January 24, 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.
`
`IPR2023-00054
`Patent 7,086,747 B2
`
`
`
`
`
`
`
`
`
`Before DEBRA K. STEPHENS, JO-ANNE M. KOKOSKI, and KERRY
`BEGLEY, Administrative Patent Judges.
`STEPHENS, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`INTRODUCTION
`I.
`On January 18, 2023, pursuant to the Board’s authorization, Signify
`North America Corporation (“Petitioner”) filed a Petitioner’s Unopposed
`Motion to Dismiss Petition for Inter Partes Review (Paper 7 (“Unopposed
`Motion”)). Petitioner and Blackbird Tech LLC (“Patent Owner”)
`(collectively, “the Parties”) filed a Joint Request That the Settlement
`
`
`
`
`571-272-7822
`
`Paper 10
`Entered: January 24, 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.
`
`IPR2023-00054
`Patent 7,086,747 B2
`
`
`
`
`
`
`
`
`
`Before DEBRA K. STEPHENS, JO-ANNE M. KOKOSKI, and KERRY
`BEGLEY, Administrative Patent Judges.
`STEPHENS, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`INTRODUCTION
`I.
`On January 18, 2023, pursuant to the Board’s authorization, Signify
`North America Corporation (“Petitioner”) filed a Petitioner’s Unopposed
`Motion to Dismiss Petition for Inter Partes Review (Paper 7 (“Unopposed
`Motion”)). Petitioner and Blackbird Tech LLC (“Patent Owner”)
`(collectively, “the Parties”) filed a Joint Request That the Settlement
`
`
`
`
`
`IPR2023-00054
`Patent 7,086,747 B2
`Agreement be Treated as Business Confidential Information and be Kept
`Separate Under 35 U.S.C. § 317(b) (Paper 8 (“Joint Request”)). In support
`of the Joint Request, the Parties filed a copy of a Confidential Settlement
`Agreement (Ex. 1034 (“Settlement Agreement”)).
`
`
`II. DISCUSSION
`In the Unopposed Motion, Petitioner states that the Parties have
`resolved their disputes regarding [U.S. Patent No. 7,086,747
`(“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
`(Unopposed Motion 2). Petitioner further states “a true copy of any
`agreement or understanding ([Settlement Agreement]) between Petitioner
`and Patent Owner made in connection with, or in contemplation of, the
`dismissal of the Petition for the proceeding” under 37 C.F.R. § 42.74(b) is
`submitted (Unopposed Motion 2). Petitioner additionally “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” (id.).
`Petitioner asserts “termination is appropriate” 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
`
`2
`
`
`
`IPR2023-00054
`Patent 7,086,747 B2
`(3) terminating the proceeding now would thus serve the interests
`of preservation of Board resources as well as the mutual interest
`of the parties
`(Unopposed Motion 3–4).
`“There are strong public policy reasons to favor settlement between
`the parties to a proceeding” (Patent Trial and Appeal Board Consolidated
`Trial Practice Guide 86 (Nov. 2019)). 1 Here, the proceeding is in its
`preliminary phase, and we have not yet decided whether to institute a trial in
`the proceeding. In view of the early stage of the proceeding and the
`settlement between the Parties, we determine it is appropriate to dismiss the
`Petition and terminate the proceeding as to the Parties, without rendering a
`decision on institution or a final written decision.
`Additionally, in the Joint Request, the Parties
`jointly request that a true copy of their settlement agreement,
`filed concurrently herewith as Exhibit 1034, be treated as
`business confidential information and be kept separate from the
`file of this inter partes review (IPR) proceeding
`(Joint Request 2).
`The Parties assert the Settlement Agreement “contain[s] highly
`sensitive business confidential information that would substantially harm
`their business interests if publicly disclosed” and request the Settlement
`Agreement “be made available only under the provisions of 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c)” (Joint Request 2). The Parties “further
`jointly request that the Board order that in the event a person or entity makes
`a written request, as stated in 37 C.F.R. § 42.74(c)(1)–(2), for access to the
`[S]ettlement [A]greement, that any such written request be served upon the
`parties on the day the written request is provided to the Board” (id.).
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`
`3
`
`
`
`IPR2023-00054
`Patent 7,086,747 B2
`After reviewing the Settlement Agreement between the Parties, we
`find the Settlement Agreement contains confidential business information
`regarding the terms of settlement. We also determine the Parties have
`complied with the requirements of 37 C.F.R. § 42.74(c) to have the
`Settlement Agreement be treated as business confidential information and be
`kept separate from the files of the ’747 Patent in this proceeding.
`Accordingly, we grant the Parties’ request to treat the Settlement Agreement
`(Ex. 1034) between the Parties as business confidential information under
`37 C.F.R. § 42.74(c) and keep the Settlement Agreement separate from the
`files of the involved patent and associated proceeding.
`We deny, however, the Parties’ request that the Board order that in the
`event a person or entity makes a written request, as stated in 37 C.F.R.
`§ 42.74(c)(1)–(2), for access to the Settlement Agreement, any such written
`request be served upon the parties on the day the written request is provided
`to the Board, as this requirement is not contemplated by our Rules. In
`particular, 37 C.F.R. § 42.74(c) requires the Settlement Agreement be made
`available to a government agency “on written request to the Board,” or to
`any other person “upon written request to the Board” and on showing of
`good cause; we decline to impose an additional burden on the requester to
`serve such written request upon the Parties.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Petitioner’s Unopposed Motion to Dismiss
`Petition for Inter Partes Review is granted;
`
`4
`
`
`
`IPR2023-00054
`Patent 7,086,747 B2
`FURTHER ORDERED that the Joint Request to Treat Settlement
`Agreement as Business Confidential Information is granted, and the
`Settlement Agreement shall remain designated as “Parties and Board Only”
`in the Board’s filing system, shall be made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause, and shall be kept separate from the files of the involved patent
`and associated proceeding, pursuant to 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that the Parties’ request that the Board order
`that any person or entity making a written request, per 37 C.F.R.
`§ 42.74(c)(1)–(2), for access to the Settlement Agreement, serve such
`written request upon the Parties on the day the written request is provided to
`the Board, is denied; and
`FURTHER ORDERED that the above-captioned proceeding is
`terminated and the Petition is dismissed.
`
`
`5
`
`
`
`IPR2023-00054
`Patent 7,086,747 B2
`FOR PETITIONER:
`Bryan C. Smith
`George R. McGuire
`BOND SCHOENECK & KING, PLLC
`bcsmith@bsk.com
`gmcguire@bsk.com
`
`FOR PATENT OWNER:
`Wendy Verlander
`VERLANDER LLP
`wverlander@verlanderllp.com
`
`Walter D. Davis, Jr.
`DAVIDSON, BERQUIST, JACKSON
` & GOWDEY, L.L.P.
`wdavis@davissonberquist.com
`
`
`6
`
`
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