`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`SHENZHEN LIOWN ELECTRONICS CO., LTD.,
`
`Petitioner,
`
`v.
`
`DISNEY ENTERPRISES, INC.,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`CASE: IPR2016-01785
`Patent No. 8,721,118 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`JOINT MOTION OF PETITIONER AND PATENT OWNER TO
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. §317 AND 37
`C.F.R. §42.74
`
`
`
`
`
`
`
`Case IPR2016-01785
`U.S. Patent No. 8,721,118 B2
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. §317 and 37 C.F.R. § 42.74, and the Board’s
`
`authorization provided on July 20, 2017, Petitioner Shenzhen Liown Electronics
`
`Co., Ltd. (“Petitioner”) and Patent Owner Luminara Worldwide LLC1 (“Patent
`
`Owner”) (collectively, the “Parties”) jointly request termination of Inter Partes
`
`Review No. IPR2016-01785 pursuant to settlement. As there are no other
`
`petitioners in this proceeding and the proceeding is still at an early stage, the
`
`Parties respectfully submit that termination of this proceeding is appropriate.
`
`STATEMENT OF FACTS
`
`Petitioner filed its petition in this proceeding for Inter Partes Review of U.S.
`
`Patent No. 8,721,118 (the “’118 Patent”) on September 14, 2016. No other
`
`petitions related to the ’118 Patent are pending.
`
`The Board issued its institution decision on April 3, 2017. The Patent
`
`Owner has not yet filed its Response, which is due on July 26, 2017.
`
`Petitioner and Patent Owner have reached a Settlement Agreement to end
`
`their disputes in this proceeding and the underlying litigation. Pursuant to 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the agreement between the Parties is in
`
`
`1 Luminara was the exclusive licensee of U.S. Patent No. 8,721,118 and given
`authority by prior assignee Disney Enterprises, Inc. to defend the patent in this
`inter partes review proceeding. See Paper 6, App. 1. Recently, on July 10, 2017,
`Disney assigned the patent to Luminara (see Reel / Frame: 042991 /0508).
`
`1
`
`
`
`Case IPR2016-01785
`U.S. Patent No. 8,721,118 B2
`writing, constitutes the entire understanding and agreement between the Parties,
`
`and a copy of the Settlement Agreement is submitted herewith as Exhibit 1033.
`
`In a separate motion, filed concurrently herewith, the Parties jointly request
`
`that the Settlement Agreement filed as Exhibit 1033 be treated as business
`
`confidential information and kept separate from the underlying patent file, as
`
`provided
`
`in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c),
`
`to maintain
`
`confidentiality of the Settlement Agreement.
`
`ARGUMENT
`
`A joint motion to terminate generally “must (1) include a brief explanation
`
`as to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents at issue; (3) identify any related proceedings currently before
`
`the Office, and (4) discuss specifically the current status of each such related
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
`
`28, 2014).
`
`The Board should terminate this proceeding as the Parties jointly request, for
`
`the following reasons.
`
`1.
`
`Brief Explanation as to Why Termination Is Appropriate
`
`The Parties have met the statutory requirement that they file a “joint request”
`
`to terminate before the Office “has decided the merits of the proceeding.” 35
`
`2
`
`
`
`Case IPR2016-01785
`U.S. Patent No. 8,721,118 B2
`U.S.C. § 317(a). The proceeding is still at an early stage. The Board entered an
`
`institution decision as to claims 1, 3, 8, and 10 on April 3, 2017. The Patent
`
`Owner has not yet filed its Response, which is due on July 26, 2017.
`
`The Parties have reached a settlement as to the ’118 Patent to end this
`
`dispute. A copy of the confidential Settlement Agreement pertaining to this case is
`
`filed concurrently herewith. See Ex. 1033. The Parties further jointly certify that
`
`there is no other agreement or understanding between them beyond Exhibit 1033
`
`made in connection with, or in contemplation of, the termination of the instant
`
`proceeding as set forth in 35 U.S.C. §317(b).
`
`The Parties respectfully submit that termination of this proceeding is
`
`appropriate because (a) this proceeding is at an early stage and no motions are
`
`outstanding; (b) the Parties have reached agreement to end their dispute concerning
`
`the ’118 Patent; (c) the Parties have agreed to dismiss the related district court
`
`litigation between themselves with respect to the ’118 Patent; (d) the Parties agree
`
`that this Inter Partes Review should be terminated; and (e) termination of this
`
`proceeding will preserve the Board’s resources and obviate the need for any more
`
`Board involvement in the present proceeding.
`
`2.
`
`Identity and Status of Parties in Related Litigation Involving the
`
`Patent
`
`3
`
`
`
`Case IPR2016-01785
`U.S. Patent No. 8,721,118 B2
`The ’118 Patent was in dispute against Petitioner in Luminara Worldwide,
`
`LLC v. Liown Electronics Co. Ltd. et al., Case 0:14-cv-03103-SRN-FLN
`
`(D. Minn.). This case has been dismissed pursuant to the Settlement Agreement
`
`between the Parties. There are no other current or contemplated pending litigation
`
`proceedings involving the ’118 Patent.
`
`3.
`
`Identity and Status of Any Related Proceedings Before the Office
`
`No other petitions related to the ’118 Patent are pending.
`
`CONCLUSION
`
`For at least the foregoing reasons, Petitioner and Patent Owner respectfully
`
`request termination of this Inter Partes Review.
`
`Dated: July 21, 2017
`
`
`
`
`
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`
`
`Respectfully submitted,
`
` /Thomas N. Millikan/
`Lead Counsel,
`Thomas N. Millikan, Reg. No. 72,316
`
`Back-Up Counsel,
`Bing Ai, Reg. No. 43,312
`Joseph P. Reid, Reg. No. 72,317
`Patrick J. McKeever, Reg. No. 66,019
`Babak Tehranchi, Reg. No. 55,937
`
`For Shenzhen Liown Electronics Co., Ltd.
`
`4
`
`
`
`Case IPR2016-01785
`U.S. Patent No. 8,721,118 B2
`Dated: July 21, 2017
`
`STERNE, KESSLER, GOLDSTEIN, &
`FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington , DC 20005-3934
`(202) 371-2600
`
`
`
`Respectfully submitted,
`
` /Jon E. Wright/
`Lead Counsel,
`Jon E. Wright, Reg. No. 50,720
`For Luminara Worldwide, LLC
`
`5
`
`
`
`Case IPR2016-01785
`U.S. Patent No. 8,721,118 B2
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a true copy of the foregoing JOINT
`
`MOTION OF PETITIONER AND PATENT OWNER TO TERMINATE
`
`PROCEEDING PURSUANT TO 35 U.S.C. §317 AND 37 C.F.R. §42.74 has
`
`been served in its entirety by electronic mail on the Patent Owner on the following:
`
`Jon E. Wright - jwright-PTAB@skgf.com
`David K.S. Cornwell - davidc-PTAB@skgf.com
`Richard D. Coller III - rcoller-PTAB@skgf.com
`Ryan S. Dean - rdean@fishiplaw.com
`John van Loben Sels - jvanlobensels@fishiplaw.com
`Pauline M. Pelletier - ppelletier@skgf.com
`Daniel R. Hall - dhall@anthonyostlund.com
`Courtland C. Merrill - cmerrill@anthonyostlund.com
`
`Respectfully submitted,
`
`Dated: July 21, 2017
`
`
`
`
`
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`
`
` /Thomas N. Millikan/
`Lead Counsel,
`Thomas N. Millikan, Reg. No. 72,316
`
`Back-Up Counsel,
`Bing Ai, Reg. No. 43,312
`Joseph P. Reid, Reg. No. 72,317
`Patrick J. McKeever, Reg. No. 66,019
`Babak Tehranchi, Reg. No. 55,937
`
`For Shenzhen Liown Electronics Co., Ltd.
`
`1
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
