Ultravision Technologies, LLC

Patent Trials and Appeals Board

Oct 8, 2021

IPR2020-01638 (P.T.A.B. Oct. 8, 2021)

Trials@uspto.gov Paper 19
Tel: 571-272-7822 Entered: October 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ACUITY BRANDS LIGHTING, INC.,
Petitioner,

v.

ULTRAVISION TECHNOLOGIES, LLC,
Patent Owner.
____________

IPR2020-01638
Patent 10,223,946 B2
____________

Before HUBERT C. LORIN, BRIAN J. McNAMARA, and
SCOTT A. DANIELS
Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-01638
Patent 10,223,946 B2

2
On September 14, 2021, with Board authorization, Petitioner and
Patent Owner (collectively “the Parties”) filed a Joint Motion to Terminate
Pursuant to 35 U.S.C. § 317(a) the above-captioned proceeding. Paper 17
(“Joint Motion”). Along with the Joint Motion, the Parties filed a copy of
their confidential Settlement Agreement (Ex. 1025), as well as a Joint
Request to treat the Settlement Agreement as business confidential
information (Paper 18, “Joint Request”). See 37 C.F.R. § 42.74(c) (a party
to a settlement may request that the settlement agreement be treated as
business confidential and be kept separate from the patent file).
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceeding, and that they have filed a true copy of the Settlement
Agreement as Exhibit 1025. Joint Motion 1. The Parties further represent
that besides the Settlement Agreement “[t]here are no collateral agreements
or understandings made in connection with, or in contemplation of, the
dismissal of the Petition,” and that “the parallel litigation has been
dismissed.” Id. at 1–2.
This proceeding is at a sufficiently early stage where Petitioner has
not filed a Reply and we have not rendered a final decision on the merits. In
view of the early stage of the proceeding and the settlement between the
Parties, we determine that good cause exists to dismiss the petition and
terminate the proceeding with respect to the Parties. This Order does not
constitute a final written decision pursuant to 35 U.S.C. § 318(a).
The parties also ask that the Settlement Agreement be treated as
business confidential information and be kept separate from the file of the
challenged patent. Joint Request 2. We determine that it is appropriate to
IPR2020-01638
Patent 10,223,946 B2

3
treat the Confidential Agreement as business confidential information, and
to keep that document separate from the file of the challenged patent,
pursuant to 37 C.F.R. § 42.74(c).

For the foregoing reasons, it is:
ORDERED that the Joint Motion is granted and this proceeding is
terminated with respect to Petitioner and Patent Owner;
FURTHER ORDERED that the Joint Request that the confidential
Settlement Agreement (Ex. 1025) be treated as business confidential
information, to be kept separate from the patent file, is granted in this
proceeding.

IPR2020-01638
Patent 10,223,946 B2

4
PETITIONER:

D. Joseph English
Glenn Richeson
DUANE MORRIS LLP
djenglish@duanemorris.com
gdricheson@duanemorris.com

PATENT OWNER:

Peter Lambrianakos
Vincent J. Rubino
Joseph M. Mercadante
Enrique W. Iturralde
FABRICANT LLP
plambrianakos@fabricantllp.com
vrubino@fabricantllp.com
jmercadante@fabricantllp.com
eiturrald@fabricantllp.com