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PTAB Tracker

June 24, 2021

DTN, LLC v. Farms Technology, LLC, Case IPR2018-01412, Paper 21

35 U.S.C. § 317(b) states, in part:

Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties.

 

In DTN, the parties submitted a Joint Motion to Terminate along with a copy of their written settlement agreement and a Joint Request that the Settlement Agreement be treated as business confidential information.  The written settlement agreement referenced other collateral agreements that were not submitted to the Board along with the Joint Motion to Terminate.  The Petitioner and Patent Owner argued that the collateral agreements did not need to be submitted for two reasons:

  1. The collateral agreements were not “between the patent owner and a petitioner” as stated in § 317(b).
  2. The collateral agreements were not “made in connection with, or in contemplation of, the termination of” the IPR proceeding.

With respect to the first point, the Board ruled that the settlement agreement was between the Patent Owner and the Petitioner and therefore constituted an “agreement or understanding between the patent owner and a petitioner.”  The Board went on to determine that § 317(b)’s recitation of “including any collateral agreements referred to in such agreement” required that all collateral agreements in the settlement agreement be submitted to the Board, even if such collateral agreements are not between the Patent Owner and the Petitioner, because the settlement agreement itself is between the Patent Owner and the Petitioner.  The Board found that to interpret the statute otherwise would invite gamesmanship in which parties “could enter into a very short agreement between themselves, referring to a separate agreement between one or more related but different corporate entities than the parties to the IPR proceeding” to avoid the disclosure requirements of § 317(b).

With respect to the second argument from the parties, the Board similarly found that, because the settlement agreement was made in contemplation of termination of the IPR proceeding, that all collateral agreements referenced by the settlement agreement also needed to be submitted to the Board.  The statute merely requires that the collateral agreements be “referred to” in the settlement agreement for such collateral agreements to fall under the scope of § 317(b).

Finally, the Board granted the parties’ joint request to treat the settlement agreement and the collateral agreements as business confidential information and granted the Joint Motion to Terminate the proceeding.

Takeaways

  1. When filing a Joint Motion to Terminate, the parties must submit not only a written settlement agreement but also any collateral agreements referenced by the settlement agreement, even if the collateral agreements are not between the parties.
  2. The Board is wary of potential gamesmanship with respect to written settlement agreements between parties “made in connection with, or in contemplation of, the termination of” an IPR proceeding.
  3. If parties are concerned about disclosing sensitive information found in a written settlement agreement or collateral agreements referenced by the settlement agreement, they should submit such agreements with a request to treat as business confidential information.  Each of the settlement agreement and the collateral agreements should be clearly identified in such a request.

Author

Rick Bisenius | Principal | Minneapolis

Rick Bisenius is a principal in the patent group in the Twin Cities office of Fish & Richardson P.C. His practice emphasizes patent post-grant proceedings (IPR and CBM), patent reexamination proceedings, U.S. and foreign patent portfolio strategy and management, and due diligence investigations.... Read More