`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SANTA’S BEST
`Petitioner,
`
`v.
`
`VARIABLE LIGHTING LLC
`Patent Owner.
`____________
`
`Case IPR2016-01066
`Patent 6,285,140
`____________
`
`JOINT REQUEST TO KEEP PAPERS SEPARATE AS BUSINESS
`CONFIDENTIAL INFORMATION PURSUANT
`TO 35 U.S.C. § 317(b)
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`IPR2016-01066
`Pat No. 6,295,140
`
`
`Exhibit
`
`DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. 6,285,140 to Ruxton
`
`File History of U.S. Patent Application No. 09/295,367 (now U.S.
`Patent No. 6,285,140)
`
`Declaration of Mike Wood
`
`U.S. Patent No. 5,008,595 to Kazar
`
`U.S. Patent No. 4,675,575 to Smith et al.
`
`International Patent Application No. PCT/GB91/00843 to Gomoluch
`
`Certified Translation of Japanese Patent Application H9-180291 to
`Minato et al. and Japanese Language Original
`
`U.S. Patent No. 5,757,111 to Sato
`
`U.S. Patent No. 6,528,954 to Lys et al.
`
`Curriculum Vitae of Expert Mike Wood
`
`Excerpt from the American Heritage Dictionary, 4th Ed.
`
`[CONFIDENTAL] Polygroup Settlement and Patent License
`Agreement
`
`[CONFIDENTIAL] Santa’s Best Settlement Agreement
`
`
`
`- i -
`
`
`
`INTRODUCTION
`
`IPR2016-01066
`Pat No. 6,295,140
`
`The Parties have entered into a SETTLEMENT AGREEMENT Effective
`
`MARCH 15, 2017 (Agreement) that resolves all underlying disputes involving U.S.
`
`Patent No. 6,295,140, including Inter Partes Review proceeding IPR2016-01066.
`
`In the Email dated April 12, 2017, the Board authorized the parties to file a
`
`joint motion to terminate and a joint request to file agreement as business
`
`confidential information.
`
` As required by the Board, the parties are submitting a true copy of the
`
`Agreement between Santa’s Best and Variable Lighting (Ex. 1013), along with their
`
`joint motion to terminate.
`
`TREAT AGREEMENT AS BUSINESS CONFIDENTIAL INFORMATION
`
`If requested, the rules permit the parties to have any filed agreement treated
`
`as business confidential information and kept separate from the files of the involved
`
`patent. 37 C.F.R. § 42.74(c). Indeed, the statute requires it.
`
`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.
`35 U.S.C. § 317(b).
`
`
`
`- 1 -
`
`
`
`
`
`IPR2016-01066
`Pat No. 6,295,140
`Petitioner and Patent Owner hereby request that the agreement filed herewith
`
`as Exhibit 1013 be treated as business confidential information, be kept separate
`
`from the file of the above captioned IPR, and be made available only to Federal
`
`Government agencies on written request, or to any person on a showing of good
`
`cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). In view of that
`
`request, Exhibit 1013 has been filed for access by the “Board Only.”
`
`Dated: April 13, 2017
`
`
`
`
`Respectfully Submitted,
`
`/Jason Eisenberg/
`Jason D. Eisenberg (Reg. No. 43,447)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`Attorney for Petitioner, Santa’s Best
`
`/Padmaja Chinta /
`Padmaja Chinta (Reg. No. 54,792)
`CITTONE & CHINTA LLP
`11 Broadway, Suite 615
`New York, NY 10004
`Tel. 212-710-5619
`aberks@cittonechinta.com
`
`Attorney for Patent Owner, Variable Lighting LLC
`
`
`
`- 2 -
`
`
`
`
`
`IPR2016-01066
`Pat No. 6,295,140
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing JOINT REQUEST TO
`
`
`
`KEEP PAPERS SEPARATE AS BUSINESS CONFIDENTIAL
`
`INFORMATION PURSUANT TO 35 U.S.C. § 317(b) and Exhibit 1013 were
`
`served electronically via e-mail on April 13, 2017, in their entireties on the following
`
`counsel of record for the Patent Owner:
`
`Padmaja Chinta (Lead Counsel)
`Henry Cittone (Back-Up Counsel)
`Andrew Berks (Back-Up Counsel)
`Peter Fratangelo (Back-Up Counsel)
`
`pchinta@cittonechinta.com
`hcittone@cittonechinta.com
`aberks@cittonechinta.com
`pfratangelo@cittonechinta.com
`
`
`
`
`Respectfully Submitted,
`
`/Jason Eisenberg/
`Jason D. Eisenberg (Reg No. 43,447)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`Attorney for Petitioner, Santa’s Best
`
`
`
`Dated: April 13, 2017
`
`
`
`
`
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