`571-272-7822
`
`
`
`
`
`Paper: 61
`
`Entered: July 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`Petitioner,
`
`v.
`
`LEGEND3D, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01243
`Patent 7,907,793 B1
`____________
`
`
`
`Before LYNNE E. PETTIGREW, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motion to Terminate
`37 C.F.R. §§ 42.5(a), 42.71(a)
`
`
`
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`
`Petitioner and Patent Owner have filed, with our prior authorization, a
`Joint Motion to Terminate Proceedings (“Motion” or “Mot.,” Paper 59)
`based on a settlement that resolves the parties’ disputes regarding the patent
`at issue in this proceeding, namely U.S. Patent No. 7,907,793 B1, as well as
`its continuation-in-part U.S. Patent No. 9,286,941 B2. Mot. 2. The parties
`concurrently filed a true copy of a Settlement and License Agreement
`(“Settlement Agreement,” Exhibits 1041 and 2028), which resolves the
`parties’ disputes with respect to IPR2016-01243 and IPR2018-00803
`(collectively, the “IPR Proceedings”). Ex. 1041, 1 (Recitals); Ex. 2028, 1
`(Recitals). In the Settlement Agreement, the parties also resolved their
`district court case, Prime Focus Creative Services Canada Inc. v. Legend3D,
`Inc., Case No. 2:15-cv-02340-MWF-PLA (C.D. Cal.). Id. Pursuant to the
`Settlement Agreement, the parties have filed motions to dismiss that lawsuit
`and to terminate the IPR Proceedings. Mot. 2. The Parties also certify that
`there are no collateral agreements or understandings made in connection
`with, or in contemplation of, the termination the IPR Proceedings. Id.
`In addition to the Motion, Petitioner and Patent Owner have filed a
`Joint Request to File Settlement Agreement as Business Confidential
`Information Under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. (“Request,”
`Paper 60). The parties request therein that the Settlement Agreement be
`treated as business confidential information and be kept separate from the
`underlying files, as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`(“A party to a settlement may request that the settlement be treated as
`business confidential information and be kept separate from the files of an
`involved patent or application.”). Request 2.
`
`2
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`
`We issued a Final Written Decision in this proceeding on
`December 18, 2017 (Paper 54). On January 16, 2018, Petitioner filed a
`Request for Rehearing (Paper 55). Under the circumstances present here, we
`determine that a decision on the Request for Rehearing is unnecessary and
`that it is appropriate to terminate this proceeding at this time. See 37 C.F.R.
`§§ 42.5(a), 42.71(a). This paper does not constitute a final written decision
`pursuant to 35 U.S.C. § 318(a).
`
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate Proceedings Pursuant
`to 35 U.S.C. § 317(a) (Paper 59) is granted;
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information Under 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74 (Paper 60) is granted;
`FURTHER ORDERED that the Settlement Agreement (Exhibits 1041
`and 2028) shall be treated as business confidential information, be
`designated “Parties and Board Only,” and be kept separate from the files of
`the involved U.S. Patent No. 7,907,793 B1.
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`FOR PETITIONER:
`Joshua Glucoft
`Michael Fleming
`Jonathan Kagan
`IRELL & MANELLA LLP
`JGlucoft@Irell.com
`MFleming@Irell.com
`JKagen@Irell.com
`PrimeFocusIPR@irell.com
`
`PATENT OWNER:
`Daniel N. Yannuzzi
`Trevor J. Quist
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`dyannuzzi@sheppardmullin.com
`tquist@sheppardmullin.com
`Sheppard-Legend3DIPR@sheppardmullin.com
`
`4
`
`
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