`______________________________
`
`BEFORE THE PATENT AND TRIAL AND APPEAL BOARD
`______________________________
`
`Innolux Corporation,
`Petitioner
`v.
`Vista Peak Ventures, LLC,
`Patent Owner
`______________________________
`
`CASE: IPR2019-00633
`Patent No. 7,009,673
`______________________________
`
`JOINT MOTION TO TERMINATE
`PROCEEDINGS UNDER 35 U.S.C. § 317(a)
`
`
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.5, 42.71(a), 42.72, and 42.74,
`
`Petitioner Innolux Corporation and Patent Owner Vista Peak Ventures, LLC jointly
`
`request termination of this proceeding seeking inter partes review of U.S. Patent No.
`
`7,009,673, Inter Partes Review Case No. IPR2019-00633. Under 37 C.F.R. § 42.20,
`
`authorization for this motion was provided by the Board on April 4, 2019.
`
`The parties have resolved their dispute with respect to U.S. Patent No.
`
`7,009,673 (the “Patent”). As required by 35 U.S.C. §§ 317(b) & 327(b), the parties
`
`are filing, concurrently herewith, a true copy of their Settlement Agreement as an
`
`exhibit in this proceeding. As outlined in the Settlement Agreement, the parties
`
`jointly agreed to terminate this proceeding.1 Other than as indicated in the
`
`Agreement, there are no written or oral agreements or understandings, including any
`
`collateral agreements, between the parties, including but not limited to licenses,
`
`covenants not to sue, confidentiality agreements, or other agreements of any kind,
`
`that are made in connection with, or in contemplation of, the termination of this
`
`proceeding. See, e.g., General Growth Properties, Inc. et al. v. Peschke, IPR 2013-
`
`00400, Paper 35 at 2-3 (Apr. 9, 2014). The parties have stipulated to dismiss all
`
`related litigation involving the Patent and no litigation or proceeding between the
`
`1 The Settlement Agreement has been filed electronically via E2E for “Parties and
`
`Board Only” to preserve confidentiality.
`
`1
`
`
`
`parties involving the Patent is contemplated in the foreseeable future. The parties
`
`are also filing concurrently herewith a joint request to treat the Agreement as
`
`business confidential information and to keep it separate from the files of the IPR
`
`and the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`The Board has discretion to dismiss “petitions under 37 C.F.R. §§ 42.5,
`
`42.71(a) . . . to promote efficiency and minimize unnecessary costs.” Samsung
`
`Elecs. Co., Ltd. v. Nvidia Corp., IPR2015-01270, Paper 11 at *4 (PTAB Dec. 9,
`
`2015).
`
`In particular, the Board “may determine a proper course of conduct in a
`
`proceeding for any situation not specifically covered” and “take up petitions or
`
`motions for decisions in any order, may grant, deny, or dismiss any petition or
`
`motion, and may enter any appropriate order.” 37 C.F.R. §§ 42.5, 42.71(a); see
`
`also, e.g., FLIR Sys., Inc. v. Garmin Corp., IPR2018-1490, 2018 WL 5276319
`
`(PTAB 2018) (dismissing petition based on petitioner’s unopposed motion).
`
`Termination of this proceeding is proper because this proceeding is still in its early
`
`stages, Vista Peak Ventures has not yet filed a Preliminary Response to the Petition
`
`(said preliminary response not being due until April 28, 2019), and the Board has
`
`not made a decision whether to institute an IPR trial in this proceeding. Dismissing
`
`the Petition will “promote efficiency and minimize unnecessary costs” by avoiding
`
`the expenditure of resources required to address the Petition on its merits. Further,
`
`the parties are unaware of any other matter before the USPTO that would be affected
`
`2
`
`
`
`by the outcome of this proceeding. Accordingly, the parties respectfully request
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`Ascenda Law Group, PC
`333 W San Carlos St., Ste. 200
`San Jose, CA 95110
`tarek.fahmi@ascendalaw.com
`Tel: 866-877-4883
`
`Attorney for Patent Owner
`
`termination of this proceeding.
`
`Respectfully submitted,
`
` /Jeffrey L. Johnson/
`Jeffrey L. Johnson
`3J6PTABDocket@orrick.com
`Reg. No. 53,078
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`609 Main St 40th Floor
`Houston, TX 77002
`Telephone: (713) 658-6400
`
`Christopher J. Higgins
`0CHPTABDocket@orrick.com
`Reg. No. 66,422
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`1152 15th Street, N.W.
`Washington, DC 20005-1706
`Telephone: (202) 339-8400
`
`Attorney for Petitioner
`
`3
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
`
`The undersigned hereby certifies that a copy of the foregoing JOINT
`
`MOTION TO TERMINATE PROCEEDINGS UNDER 35 U.S.C. § 317(a) has
`
`been served via electronic mail on April 16, 2019, upon the following:
`
`Tarek N. Fahmi
`Jonathan Tsao
`Ascenda Law Group, PC
`333 West San Carlos Street, Suite 200
`San Jose, CA 95110
`patents@ascendalaw.com
`
`Dated: April 16, 2019
`
` /Karen Johnson/
` Karen Johnson
`
`4
`
`
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