Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 11
`Entered: October 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`LEMAIRE ILLUMINATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01700 (Patent 6,095,661)
`Case IPR2017-01744 (Patent 6,488,390 B1)
`Case IPR2017-01806 (Patent 9,119,266 B1)1
`
`____________
`
`
`
`Before ALEX S. YAP, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Without Prejudice Motions to Terminate the Proceedings
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`
`
`1 This Order addresses issues pertaining to all three cases. Therefore, a
`single Order is issued to be filed in each case. The parties are not authorized
`to use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`Paper 11
`Entered: October 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`LEMAIRE ILLUMINATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01700 (Patent 6,095,661)
`Case IPR2017-01744 (Patent 6,488,390 B1)
`Case IPR2017-01806 (Patent 9,119,266 B1)1
`
`____________
`
`
`
`Before ALEX S. YAP, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Without Prejudice Motions to Terminate the Proceedings
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`
`
`1 This Order addresses issues pertaining to all three cases. Therefore, a
`single Order is issued to be filed in each case. The parties are not authorized
`to use this style heading for any subsequent papers.
`
`
`
`IPR2017-01700 (Patent 6,095,661)
`IPR2017-01744 (Patent 6,488,390 B1)
`IPR2017-01806 (Patent 9,119,266 B1)
`
`On October 19, 2017, the parties filed joint motions to terminate
`
`IPR2017-01700, IPR2017-01744, and IPR2017-01806 (collectively, “these
`proceedings”) under 35 U.S.C. § 317(a). (IPR2017-01700, Paper 7;
`IPR2017-01744, Paper 8; IPR2017-01806, Paper 6). The arguments made
`by the parties and the factual circumstances of each case are similar. For
`purposes of this Order, this Order treats the joint motion to terminate (Paper
`7) in Case IPR2017-01700 as representative, and specifically discuss the
`circumstances of that motion.2 The present Order, however, applies equally
`to each of the three motions to terminate. For the reasons stated below,
`parties’ motions to terminate these proceedings are denied without prejudice.
`
`The parties are reminded that the Board is not a party to the
`settlement, and may independently identify any question of patentability. 37
`C.F.R § 42.74(a). Generally, however, the Board expects that a proceeding
`will terminate after the filing of a settlement agreement. See, e.g., Office
`Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). The rule
`governing settlement indicates that any agreement between the parties made
`in connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and filed with the Board. 37 C.F.R. §§ 42.2 (defining the
`term “Proceeding”); 42.74. The parties assert that they sought authorization
`for the filing of the joint motion to terminate this proceeding, but
`acknowledge that no authorization was received prior to the filings. Paper 7
`(“Mot.”), 3; Ex. 1022.3
`
`2 Unless otherwise specified, this Order refers to papers and exhibits filed in
`Case IPR2017-01700.
`3 The panel has not yet received the e-mail requesting authorization to file
`the motions to terminate (Exhibit 1022).
`
`2
`
`
`
`
`
`
`IPR2017-01700 (Patent 6,095,661)
`IPR2017-01744 (Patent 6,488,390 B1)
`IPR2017-01806 (Patent 9,119,266 B1)
`
`
`Each of the joint motions to terminate must be accompanied by a true
`copy of the parties’ settlement agreement, as required by 37 C.F.R.
`§ 42.74(b). With respect to having the settlement agreement treated as
`business confidential under 37 C.F.R. § 42.74(c), the parties must file the
`confidential settlement electronically in the Patent Trial and Appeal Board
`End to End (PTAB E2E) as an exhibit in accordance with the instructions
`provided on the Board’s website (uploading as “Parties and Board Only”).
`In this case, the parties did not file a copy of their settlement
`agreement. Moreover, the parties did not identify the status of related
`actions sufficiently, and only state that the parties have settled the cases and
`that the two related District Court cases were dismissed on October 18,
`2017. Mot. 2–3. The parties do not state whether any litigation or
`proceeding involving the subject patents is contemplated in the foreseeable
`future or whether any collateral agreements or understandings were made in
`connection with, or in contemplation of, the termination of these
`proceedings.
`Accordingly, it is
`ORDERED that the joint motions to terminate the proceedings are
`denied without prejudice;
`FURTHER ORDERED that the parties are authorized to file corrected
`joint motions to terminate the proceedings within seven days of this
`ORDER;
`FURTHER ORDERED that the corrected joint motions to terminate
`the proceedings must be accompanied by a fully executed, true copy of the
`
`
`
`
`3
`
`
`
`
`
`IPR2017-01700 (Patent 6,095,661)
`IPR2017-01744 (Patent 6,488,390 B1)
`IPR2017-01806 (Patent 9,119,266 B1)
`
`parties’ settlement agreement, filed electronically in PTAB E2E as an
`exhibit;
`FURTHER ORDERED that the parties may request, in the joint
`motions to terminate, that the exhibit that is the settlement agreement be
`treated as business confidential information, to be kept separate from the
`patent file, as specified in 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that the corrected joint motions to terminate
`the proceedings should update the Board concerning the status of any
`litigation or proceeding, including, but not limited to, proceedings in the
`U.S. Patent and Trademark Office, involving the subject patents, and advise
`the Board whether any litigation or proceeding involving the subject patents
`is contemplated in the foreseeable future; and
`FURTHER ORDERED that the corrected joint motions to terminate
`the proceedings should include a statement certifying that there are no
`collateral agreements or understandings made in connection with, or in
`contemplation of, the termination of the inter partes review.
`
`
`
`
`
`4
`
`
`
`
`
`IPR2017-01700 (Patent 6,095,661)
`IPR2017-01744 (Patent 6,488,390 B1)
`IPR2017-01806 (Patent 9,119,266 B1)
`
`PETITIONER:
`David Makous
`dmakous@lhlaw.com
`
`
`PATENT OWNER:
`Eduardo Drake
`eduardo@fantasticipconsulting.com
`
`Jonathan Rixen
`jrixen@lemairepatent.com
`
`
`
`
`
`
`5
`
`
`
`
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