Ultravision Technologies, LLC

Patent Trials and Appeals Board

Oct 12, 2021

IPR2021-00905 (P.T.A.B. Oct. 12, 2021)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: October 12, 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.
____________

IPR2021-00905
Patent 9,947,248 B2
____________

Before BRIAN J. McNAMARA, SCOTT A. DANIELS, and
ROBERT L. KINDER
Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

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

IPR2021-00905
Patent 9,947,248 B2

2
On September 14, 2021, with Board authorization, Petitioner and
Patent Owner (collectively “the Parties”) filed a Joint Motion to Dismiss
Pursuant to 35 U.S.C. § 317(a) the above-captioned proceeding. Paper 7
(“Joint Motion”). Along with the Joint Motion, the Parties filed a copy of
their confidential Settlement Agreement (Ex. 1042), as well as a Joint
Request to treat the Settlement Agreement as business confidential
information (Paper 9, “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 to dismiss the above-identified inter partes review
proceeding, and that the filed copy of the Settlement Agreement is a true
copy of their agreement. 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 “[t]here are currently no litigations or
proceedings involving the ’248 Patent.” Id. at 2.
This proceeding is at an early stage as we have not yet decided
whether to institute a trial in the proceeding. 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 1. We determine that it is appropriate to
IPR2021-00905
Patent 9,947,248 B2

3
treat the Settlement 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
dismissed with respect to Petitioner and Patent Owner;
FURTHER ORDERED that the Joint Request that the confidential
Settlement Agreement (Ex. 1042) be treated as business confidential
information, and be kept separate from the patent file, is granted in this
proceeding.

IPR2021-00905
Patent 9,947,248 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
FABRICANT LLP
plambrianakos@fabricantllp.com
vrubino@fabricantllp.com
jmercadante@fabricantllp.com