`571.272.7822
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` Paper No. 9
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` Entered: August 24, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SANTA’S BEST AND POLYGROUP LIMITED (MCO),
`Petitioner,
`
`v.
`
`VARIABLE LIGHTING LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01066
`Patent 6,285,140 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Joint Motion to Terminate
`37 C.F.R. § 42.74
`
`On August 17, 2016, Patent Owner Variable Lighting, LLC and
`Petitioners Polygroup Limited (MCO)(“Polygroup”) and Santa’s Best filed a
`joint motion to terminate this proceeding only with respect to Polygroup
`pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74. Paper No. 7. The
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`IPR2016-01066
`Patent 6,285,140 B1
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`parties represent that termination with respect to Polygroup is appropriate
`because the dispute between Polygroup and Patent Owner has been resolved,
`and Polygroup and Patent Owner have agreed to terminate Polygroup as a
`party. Id. at 1. Santa’s Best does not oppose termination with respect to
`Polygroup. With the motion, Polygroup and Patent Owner filed a copy of a
`document they represent is a “true copy of their Settlement and Patent
`License Agreement” as Exhibit 1012. Id. The parties further request that
`the agreement (Ex. 1012) be treated as confidential business information
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and concurrently filed a
`Motion to Seal. Papers 7, 8.
`
`This proceeding is in an early stage and no decision whether to
`institute inter partes review has been made. Under these circumstances, we
`determine that it is appropriate to terminate this proceeding as to Polygroup.
`The proceeding is not terminated with respect to Santa’s Best. We further
`determine the request to keep the agreement separate was timely filed, and,
`therefore, grant the motion to seal.
`
`It is
`
`ORDERED that the joint Motion to Terminate the captioned
`proceeding with respect to Polygroup Limited (MCO) is GRANTED;
`
`FURTHER ORDERED that the joint request that the settlement
`agreement (Ex. 1012) be treated as business confidential information, be
`kept separate from the file of the involved patent, and made available only to
`Federal Government agencies on written request, or to any person on a
`showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c), is GRANTED;
`
`FURTHER ORDERED that this proceeding will continue with
`Santa’s Best as named Petitioner.
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`2
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`IPR2016-01066
`Patent 6,285,140 B1
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`For PETITIONER:
`
`Jason D. Eisenberg
`John H. Curry
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jason-ptab@skgf.com
`jcurry-ptab@skgf.com
`
`William W. Cochran
`COCHRAN FREUND & YOUNG LLC
`billc@patentlegal.com
`
`Dustin B. Weeks
`TROUTMAN SANDERS LLP
`dustin.weeks@troutmansanders.com
`
`
`For PATENT OWNER:
`
`Padmaja Chinta
`pchinta@cittonechinta.com
`
`Andrew Berks
`aberks@cittonechinta.com
`
`3