Pillar Vision, Inc., d/b/a Noah Basketball

Patent Trials and Appeals Board

Jan 5, 2021

IPR2021-00010 (P.T.A.B. Jan. 5, 2021)

Trials@uspto.gov Paper 8
571-272-7822 Date: January 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

RSPCT BASKETBALL TECHNOLOGIES, LTD.,
Petitioner,

v.

PILLAR VISION, INC., D/B/A NOAH BASKETBALL,
Patent Owner.
____________

IPR2021-00006 (Patent 7,854,669 B2)
IPR2021-00010 (Patent 7,094,164 B2)
IPR2021-00011 (Patent 10,343,015 B2)1
____________

Before KEN B. BARRETT, BARRY L. GROSSMAN, and
ERIC C. JESCHKE, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 This Decision applies to all of the above-identified proceedings. We
exercise our discretion to issue one Decision to be filed in each case. The
parties are not authorized to use this style heading for any subsequent
papers.
IPR2021-00006 (Patent 7,854,669 B2)
IPR2021-00010 (Patent 7,094,164 B2)
IPR2021-00011 (Patent 10,343,015 B2)

2
With our authorization, the parties filed in each of the
above-captioned proceedings, on January 4, 2021, a “Joint Motion to
Withdraw Petition for Inter Partes Review.” Paper 62 (“Mot.”). We treat
the parties’ request as a joint motion to terminate the proceedings and to
dismiss the petitions. Each petition shall remain in the respective record.
Along with the Joint Motion, the parties filed a copy of a document,
Exhibit 2001, they describe as a true copy of their written settlement
agreement made in connection with the withdrawal of the Petitions. See
Mot. 1; id. at i (exhibit list identifying Exhibit 2001 as “Settlement
Agreement”). The parties also filed a “Joint Request That the Settlement
Agreement Be Treated as Business Confidential Information and Be Kept
Separate under 35 U.S.C. § 317(b).” Paper 7.
These proceedings still are in their preliminary stages. Patent Owner
has not filed a preliminary response, and we have not entered a decision on
whether to institute an inter partes review.
The parties indicate that they have resolved their disputes regarding
the subject patents, including the related district court litigation. Mot. 1. In
their Joint Motion, the parties certify that the settlement agreement filed with
the Joint Motion is “a true copy of any agreement or understanding (Exhibit
2001) between Petitioner and Patent Owner made in connection with, or in
contemplation of, the withdrawal of the Petition for the proceeding under 37
CFR § 42.74(b).” Id. We understand this to be the parties’ representation
and certification that there are no other oral or written agreements or

2 Citations herein are to the record in IPR2021-00006. Corresponding papers
and exhibits may be found in the records of the related cases.
IPR2021-00006 (Patent 7,854,669 B2)
IPR2021-00010 (Patent 7,094,164 B2)
IPR2021-00011 (Patent 10,343,015 B2)

3
understandings, including any collateral agreements, between them that are
made in connection with, or in contemplation of, the termination of these
inter partes reviews. See 35 U.S.C. § 317(b). If our understanding is
incorrect, the parties shall contact the Board immediately.
Under these particular circumstances, we determine that it is
appropriate to dismiss the Petitions without rendering any further decisions,
thereby terminating these proceedings. See 37 C.F.R. § 42.71(a). We also
have reviewed the settlement agreement, and we determine that the
settlement agreement contains business confidential information regarding
the terms of the settlement and that good cause exists to treat the settlement
agreement as business confidential information under 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ joint motions to terminate the
proceedings in IPR2021-00006, IPR2021-00010, and IPR2021-00011 are
granted, and the Petitions are dismissed;
FURTHER ORDERED that the parties’ joint requests to treat the
settlement agreement (Exhibit 2001) as business confidential information
under 37 C.F.R. § 42.74(c) are granted; and
FURTHER ORDERED that the above-captioned proceedings are
terminated.

IPR2021-00006 (Patent 7,854,669 B2)
IPR2021-00010 (Patent 7,094,164 B2)
IPR2021-00011 (Patent 10,343,015 B2)

4
PETITIONER:
Kelly Swartz
Mark Malek
WIDERMAN MALEK, PA
jill@uslegalteam.com
michelle@uslegalteam.com

PATENT OWNER:
Binal Patel
Erik Maurer
Blair Silver
Kurt Riester
Christian Wolfgram
BANNER & WITCOFF, LTD
bpatel@bannerwitcoff.com
emaurer@bannerwitcoff.com
bsilver@bannerwitcoff.com
kriester@bannerwitcoff.com
cwolfgram@bannerwitcoff.com