Geigtech East Bay, LLC

Patent Trials and Appeals Board

Sep 10, 2020

IPR2020-00957 (P.T.A.B. Sep. 10, 2020)

Trials@uspto.gov Paper 10
571-272-7822 Entered: September 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

LUTRON ELECTRONICS CO., INC.,
Petitioner,
v.
GEIGTECH EAST BAY, LLC,
Patent Owner.

Cases IPR2020-00957 and IPR2020-009581
Patent 10,294,717 B2

Before BARRY L. GROSSMAN, FRANCES L. IPPOLITO, and
BRENT M. DOUGAL, Administrative Patent Judges.
GROSSMAN, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 This Order addresses issues that are the same in all identified proceedings.
We exercise our discretion to issue one Order to be filed in each proceeding.
The parties, however, are not authorized to use this style heading in
subsequent papers.
Cases IPR2020-00957 and IPR2020-00958
Patent 10,294,717 B2
2
I. INTRODUCTION
On September 3, 2020, pursuant to our authorization on August 28,
2020, Petitioner and Patent Owner (“Parties”) filed a Joint Motion to
Withdraw the Petitions in each of the above-identified inter partes review
proceedings. Paper 92 (collectively, “Motions”). The Motions address
“termination of these proceedings” (id. at 2), and, thus, we treat the Motions
as a request for termination of these proceedings. Additionally, along with
the Motions, the Parties filed a copy of a “Termination Agreement” in each
of the above-identified proceedings (collectively, “Agreements”).
Ex. 1022.3
II. DISCUSSION
In the Motions, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceedings, that the Agreements are the entire agreement in
connection with the termination of these proceedings, and that there are no
other agreements or understandings between the parties made in connection
with, or in contemplation of, the termination of these proceedings. Paper 9,
1–2; see Ex. 1002, 1.
The above-identified proceedings are at an early stage, and we have
not yet decided whether to institute a trial in each proceeding. In view of the
early stage of the proceedings and the Agreements between the Parties, we
determine that good cause exists to terminate the proceedings.

2 Citations are to Papers and Exhibits filed in IPR2020-00957, unless
otherwise indicated. The Parties filed a similar paper in IPR2020-00958.
Paper 8.
3 The Parties filed a similar exhibit in IPR2020-00958. Ex 1022.
Cases IPR2020-00957 and IPR2020-00958
Patent 10,294,717 B2
3
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the joint motions to terminate IPR2020-00957 and
IPR2020-00958 are granted; and
FURTHER ORDERED that the proceedings are terminated.
Cases IPR2020-00957 and IPR2020-00958
Patent 10,294,717 B2
4
FOR PETITIONER:
Nirav N. Desai
Jason D. Eisenberg
Trevor M. O’Neill
KESSLER, GOLDSTEIN & FOX P.L.L.C
ndesai-ptab@sternekessler.com
jasone-ptab@sternekessler.com
toneill-ptab@sternekessler.com

FOR PATENT OWNER:
Gary R. Sorden
Marcella M. Bodner
COLE SCHOTZ P.C.
gsorden@coleschotz.com
mbodner@coleschotz.com