Tigo Energy, Inc.

Patent Trials and Appeals Board

May 3, 2021

IPR2021-00541 (P.T.A.B. May. 3, 2021)

Trials@uspto.gov Paper 8
571-272-7822 Date: May 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ALTENERGY POWER SYSTEMS INC.,
Petitioner,

v.

TIGO ENERGY INC.,
Patent Owner.
____________

IPR2021-00540 (Patent 10,256,770 B2)
IPR2021-00541 (Patent 8,933,321 B2)
____________

Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION
Dismissal Prior to Institution of Trial
35 U.S.C. § 314

IPR2020-01296 (Patent 8,168,147 B2)
IPR2020-01297 (Patent 8,168,147 B2)

2

On February 16, 2021 Altenergy Power Systems Inc. filed two
petitions requesting inter partes review of certain claims of U.S. Patent Nos.
10,256,770 and 8,933,321 (collectively “challenged patents”) owned by
Tigo Energy Inc. See IPR2021-00540, Paper 1; IPR2021-00541, Paper 1.
On April 26, 2021, with Board authorization, the parties filed Joint Motions
to Terminate Proceedings in each inter partes review. IPR2021-00540,
Paper 6; IPR2021-00541, Paper 6 (collectively “Motion to Terminate”). The
Motions filed in each inter partes review are substantively identical. Id.
The parties also filed Joint Motions to File the Agreement as Business
Confidential Information Pursuant to 35 U.S.C. § 317. IPR2021-00540,
Paper 7; IPR2021-00541, Paper 7.
The parties explain that “[t]ermination is appropriate because no
patent owner response or further papers have been filed, oral argument has
not been held, the Board has not decided the merits of the proceeding, and a
final written decision has not been issued.” Motion to Terminate 2. The
parties further assert that they have “resolved their disputes and executed an
agreement which contemplates requesting termination of this proceeding and
dismissing the Parties’ related proceeding regarding the [challenged patents]
in Tigo Energy Inc. v. Altenergy Power Sys. Inc. et al., 5:20-cv-03622 (N.D.
Cal.).” Id.; Ex. 1025. According to the parties, “[a] joint stipulation of
dismissal was submitted in [the district court] action” and “[t]here are no
other pending district court actions in which the [challenged patents are]
asserted.” Motion to Terminate 2. The parties represent that they have fully
resolved the issues between them (Ex. 1025, “Settlement Agreement”) and
“[t]here are no other agreements, oral or written, between the parties”
IPR2020-01296 (Patent 8,168,147 B2)
IPR2020-01297 (Patent 8,168,147 B2)

3

(Motion to Terminate 3). Accordingly, the parties jointly request that we
terminate this proceeding. Id. at 4.
Our “regulations expressly provide the Board with broad authority to
dismiss a petition where appropriate.” Facebook, Inc. v. EveryMD.com,
IPR2018-00050, Paper 19 at 4 (PTAB Oct. 9, 2018); see 37 C.F.R.
§ 42.71(a) (“The Board . . . may grant, deny, or dismiss any petition or
motion.”). Under these circumstances, we determine that it is appropriate to
dismiss the Petition and terminate the proceeding. After reviewing the
Settlement Agreement, we further find that it contains confidential business
information regarding the terms of the settlement and that good cause exists
to grant the Motion to File and treat the Settlement Agreement as business
confidential information to be kept separate from the patent files. See
35 U.S.C. § 317(b); 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 view of the foregoing, it is,
ORDERED that the Parties’ Joint Motion to Terminate Proceedings
(Paper 6) in each case is granted;
FURTHER ORDERED that the Petition in each case is dismissed, and
IPR2021-00540 and IPR2021-00541 are terminated;
FURTHER ORDERED that the Joint Motion to File the Agreement as
Business Confidential (Paper 7) in each case is granted;
FURTHER ORDERED that the Settlement Agreement (Ex. 1025)
shall be kept separate from the files of U.S. Patent Nos. 10,256,770 and
8,933,321.
IPR2020-01296 (Patent 8,168,147 B2)
IPR2020-01297 (Patent 8,168,147 B2)

4

For PETITIONER:
Philip Marsh
Michael Nguyen
Arnold & Porter Kaye Scholer LLP

Philip.marsh@arnoldporter.com
Michael.nguyen@arnoldporter.com

For PATENT OWNER:
Heath J. Briggs (Reg. No. 54,919)
John P. Ward (Reg. No. 40,216)
Leif Olson (Reg. No. 79,428)
Greenberg Traurig, LLP

BriggsH@gtlaw.com
wardj@gtlaw.com
olsonl@gtlaw.com