`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`TCL MULTIMEDIA TECHNOLOGY HOLDINGS, LTD.
`and
`TTE TECHNOLOGY, INC.,
`Petitioners,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`
`_______________
`
`Case IPR2017-02001
`Patent No. 8,309,375 B2
`
`_______________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Patent Owner
`
`Nichia Corporation (“Patent Owner”) and Petitioners TCL Multimedia Technology
`
`Holdings, Ltd. and TTE Technology, Inc. (“Petitioners”) jointly move the Patent
`
`Trial and Appeal Board (“Board”) to terminate the following inter partes review
`
`proceeding in its entirety:
`
`IPR Case No.
`
`IPR2017-02001
`
`Patent No.
`
`8,309,375
`
`The parties notified the Board of the parties’ settlement by email
`
`correspondence dated February 22, 2018, and received authorization to file this
`
`Motion to Terminate by order dated February 26, 2018. Pap. 8. In support of the
`
`Motion to Terminate Proceeding, the parties state as follows:
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), Petitioner and
`
`Patent Owner have separately filed herewith a true copy (including counterparts) of
`
`the confidential settlement agreement and the purchase agreement. Because the
`
`settlement agreement and purchase agreement are confidential, the parties
`
`respectfully request that they be treated as business confidential information, be
`
`kept separate from the underlying patent file, and be made available only as
`
`provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and have filed herewith a
`
`separate paper setting forth this request.
`
`
`
`1
`
`
`
`
`
`
`
`The statutory provision on a settlement relating to inter partes reviews
`
`provides that an inter partes review “shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner, unless the
`
`Office has decided the merits of the proceeding before the request for termination
`
`is filed.” 35 U.S.C. § 317. It also provides that, “[i]f no petitioner remains in the
`
`inter partes review, the Office may terminate the review or proceed to a final
`
`written decision under section 318(a).” Id.
`
`
`
`This proceeding is in the preliminary stage. This inter partes review has not
`
`been instituted. Petitioner filed its petition for inter partes review on August 25,
`
`2017, and Patent Owner filed a preliminary response on February 9, 2018. The
`
`parties have settled their dispute and have agreed to file a stipulated dismissal in
`
`the district court litigation in which U.S. Patent No. 8,309,375 had been asserted
`
`(Case No. 1:16-cv-00681 (RGA) (D. Del.)). The parties also agreed to terminate
`
`this inter partes review as well as other inter partes review proceedings concerning
`
`related patents that had been asserted in that litigation, namely IPR2017-
`
`01998, -01999, -02000, and are simultaneously filing corresponding motions in
`
`those proceedings.1
`
`
`1 Patent Owner notes that an IPR petition filed by different petitioners challenging
`
`certain claims of Patent Owner’s related U.S. Patent No. 7,15,631 is still pending.
`
`2
`
`
`
`
`
`As noted above, the parties’ settlement agreement and purchase agreement
`
`have been made in writing, and true and correct copies shall be filed with this
`
`Office as business confidential information pursuant to 35 U.S.C. § 317(b).
`
`
`
`Because the Board has not decided the merits of this inter partes review
`
`proceeding, Section 317 provides that the proceeding should be terminated with
`
`respect to Petitioners. Moreover, because TCL Multimedia Technology Holdings,
`
`Ltd. and TTE Technology, Inc. are the only petitioners in the proceeding, once the
`
`proceeding is terminated with respect them, no petitioner will remain in the inter
`
`partes review, and the Office may terminate the review in its entirety under
`
`Section 317. Patent Owner and Petitioners jointly submit that the Board should do
`
`so.
`
`Because this proceeding has not yet been instituted and Patent Owner only
`
`just filed its preliminary response on February 9, 2018, termination would save
`
`significant expenditure of resources by the Board and would further the purpose of
`
`IPR proceedings to provide an efficient and less costly alternative forum for patent
`
`disputes (including by encouraging settlement). The Board has routinely
`
`terminated proceedings at the request of settling parties in cases that have
`
`progressed much further than the present proceeding, see, e.g., Apex Medical Corp.
`
`See Lowe’s Companies, Inc. et al. v. Nichia Corporation, IPR2018-00066. Patent
`
`Owner filed its preliminary response to that petition on January 26, 2018.
`
`3
`
`
`
`
`
`v. Resmed Ltd., IPR2013-00512, Pap. 39, at 24 (Sept. 12, 2014) (granting motion
`
`to terminate in its entirety notwithstanding that instituted proceeding was fully
`
`briefed); Volusion, Inc. v. Versata Software, Inc., CBM2013-00018, Pap. 52, at 2
`
`(June 17, 2014) (granting motion to terminate instituted proceeding in its entirety
`
`after final oral hearing); see also ARM, Ltd. v. Godo Kaisha IP Bridge 1, IPR2017-
`
`00527, Pap. 10, at 2-3 (May 12, 2017) (granting motion to terminate in its entirety
`
`after preliminary response but prior to institution). The parties respectfully request
`
`that the Board terminate this inter partes review proceeding in its entirety. Indeed,
`
`the Board has stated an expectation that proceedings such as this one will be
`
`terminated after the filing of a settlement agreement: “[t]here are strong public
`
`policy reasons to favor settlement between the parties to a proceeding . . . . The
`
`Board expects that a proceeding will terminate after the filing of a settlement
`
`agreement, unless the Board has already decided the merits of the proceeding. 35
`
`U.S.C. § 317(a), as amended. . . .” Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012) (emphasis added). For at least the reasons
`
`noted above, the Board’s expectation that such proceedings should be terminated is
`
`proper and well justified here.
`
`III. CONCLUSION
`
`
`
`Wherefore, Patent Owner and Petitioners respectfully request that the Board
`
`grant the parties’ Joint Motion to Terminate Case Number IPR2017-02001 in its
`
`4
`
`
`
`
`
`entirety and grant the request to treat the settlement agreement and the purchase
`
`agreement between the parties as business confidential information.
`
`
`
`Petitioner and Patent Owner are available at the Board’s convenience to
`
`discuss these related matters in more detail or answer any additional questions
`
`Respectfully submitted,
`
`/s/James M. Glass
`James M. Glass, Reg. No. 46729
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`jimglass@quinnemanuel.com
`
`Counsel for Petitioners TCL
`Multimedia Technology Holdings,
`Ltd. and TTE Technology, Inc.
`
`raised by this joint motion.
`
`/s/ David E. Cole
`David E. Cole, Reg. No. 73,084
`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006-1047
`Tel.: (202) 223-7300
`Fax: (202) 223-7420
`dcole@paulweiss.com
`
`Counsel for Patent Owner Nichia
`Corporation
`
`
`
`
`Dated: February 27, 2018
`
`
`
`
`
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that, on February 27, 2018, I
`
`caused a true and correct copy of the foregoing JOINT MOTION TO
`
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 to be served by
`
`email and electronic transfer on the following counsel of record for Petitioners
`
`TCL Multimedia Technology Holdings Ltd. and TTE Technology, Inc.:
`
`James M. Glass, Esq.
`Raymond N. Nimrod, Esq.
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com
`raynimrod@quinnemanuel.com
`
`
`
`
`
`
`
`
`
`
`/s/ David E. Cole
`David E. Cole (Reg. No. 73,084)
`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006-1047
`Tel.: (202) 223-7300
`Fax: (202) 223-7420
`dcole@paulweiss.com
`
`Counsel for Patent Owner
`Nichia Corporation
`
`6
`
`
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
