WANGS ALLIANCE CORPORATION d/b/a WAC LIGHTING

Patent Trials and Appeals Board

Sep 29, 2021

PGR2021-00012 (P.T.A.B. Sep. 29, 2021)

Trials@uspto.gov Paper 36
Tel: 571-272-7822 Date: September 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CAST LIGHTING, LLC,
Petitioner,

v.

WANGS ALLIANCE CORPORATION d/b/a WAC LIGHTING,
Patent Owner.
____________

PGR2021-00012
Patent 10,571,101 B2
____________

Before TREVOR M. JEFFERSON, PATRICK M. BOUCHER, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 327; 37 C.F.R. § 42.74

PGR2021-00012
Patent 10,571,101 B2

2
With our authorization, the parties filed a Joint Motion to Terminate
this proceeding (Paper 33 (“Joint Motion”)) and a Joint Request to File a
Settlement Agreement as Business Confidential Information (Paper 34
(“Joint Request”)). With the Joint Motion and Joint Request, the parties
filed Exhibit 2015 (“Settlement Agreement”), which they describe as “a true
copy of their settlement agreement,” Paper 34, 1, and as “a confidential
settlement agreement that resolves all underlying disputes between the
parties with respect to this post-grant review (PGR) proceeding,” Paper 33,
1. In their Joint Motion, the parties represent that “[t]here are no other
agreements, oral or written, between the parties made in connection with, or
in contemplation of, the termination of this proceeding.” Paper 33, 3. The
parties request that “Exhibit 2015[] be treated as business confidential
information and be kept separate from the file of this post-grant review
(PGR) proceeding” and “kept separate from the files of the involved patent.”
Paper 33, 1; Paper 34, 1.
Under 35 U.S.C. § 327(a), “[a] post-grant review instituted under this
chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.” The
parties represent that Exhibit 2015 is a true copy of their settlement
agreement, and, after reviewing the exhibit, we find that the parties’
characterization of the settlement agreement as “confidential” is accurate, as
the exhibit appears to contain confidential business information regarding
the terms of the settlement. Ex. 2015; Paper 34, 1.
We have not yet decided the merits of this proceeding, and a final
written decision has not been entered in this proceeding. Post-institution
PGR2021-00012
Patent 10,571,101 B2

3
briefs have not yet been filed, and an oral hearing has not yet been held.
Under these circumstances, we determine that it is appropriate to terminate
the proceeding and to treat the Settlement Agreement as business
confidential information pursuant to 35 U.S.C. § 327(b).
We accordingly determine that it is appropriate to terminate this
proceeding without rendering a Final Written Decision as to the patentability
of the challenged claims of U.S Patent 10,571,101 B2, and grant the Joint
Motion and Joint Request.

It is
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that this proceeding is hereby terminated as to
all parties;
FURTHER ORDERED that the Joint Request to File the Settlement
Agreement as Business Confidential Information is granted;
FURTHER ORDERED that the filed Settlement Agreement
(Ex. 2015) be treated as business confidential information pursuant to 35
U.S.C. § 327(b) and 37 C.F.R. § 42.74(c), be kept separate from the file of
the above-referenced proceeding and from the file of U.S. Patent
10,571,101, and also remain designated as “Parties and Board Only” in the
Board’s E2E system.

PGR2021-00012
Patent 10,571,101 B2

4
For PETITIONER:
Ari J. Jaffess
LISTON ABRAMSON LLP
ari.jaffess@listonabramson.com

Brian N. Dematteo
Y. Jae Kim
Chintan Desai
Peter Tu
KIM IP LAW GROUP
bryandematteo@kimiplawgroup.com
patent@kimiplawgroup.com
chintandesai@kimiplawgroup.com

For PATENT OWNER:

Michael D. Specht
Lestin L. Kenton
Deirdre M. Wells
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mspecht-PTAB@sternekessler.com
lkenton-PTAB@sternekessler.com
dwells-PTAB@sternekessler.com