DTN, LLC v. Farms Technology, LLC,  IPR2018-01412, -01525 (June 14, 2019)

On June 11, 2020, the PTAB designated as precedential its 2019 decision in  DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of the obligation to file agreements with the Patent Office under 35 U.S.C. §317(b) when seeking a termination.

The statute reads as follows:

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. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.

The parties filed their Settlement Agreement and sought to have the IPRs terminated. The PTAB reviewed the Settlement Agreement, and questioned the parties why two agreements mentioned in the Settlement Agreement were not filed as collateral agreements under the statute. Patent owner Farm Technology, LLC was not a party to the two agreements in question.

The parties proffered two reasons for not filing the agreements: (1) the agreements were not between the patent owner and the petitioner, and (2) the agreements were not made in connection with or contemplation of the termination of the IPRs. The PTAB was not persuaded by these arguments, and stated that “[t]he Collateral Agreements need only be ‘referred to’ in the Settlement Agreement to qualify under §317(b), which they undisputedly are.” Slip op. at 9. The PTAB thus required the submission, and further ruled that the Settlement Agreement and two Collateral Agreements would be treated as  “business confidential information,” which limits public access to the documents. Slip op. at 10.