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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ USA, LLC and
`
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`
`Petitioners,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`
`
`
`Patent Owner.
`
`___________
`
`IPR2015-00359, Patent No. 7,384,177
`IPR2015-00360, Patent No. 7,300,194
`IPR2015-00361, Patent No. 6,755,547
`IPR2015-00363, Patent No. 7,404,660
`IPR2015-00366, Patent No. 8,215,816
`IPR2015-00368, Patent No. 7,434,974
`IPR2015-00994, Patent No. 6,886,956
`IPR2015-01044, Patent No. 7,384,177
`IPR2015-01067, Patent No. 6,508,563
`IPR2015-01113, Patent No. 7,404,660
`IPR2015-01114, Patent No. 8,215,816
`IPR2015-01115, Patent No. 7,434,974
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`FOR INTER PARTES REVIEW OF
`U.S. PATENT NOS. 7,384,177; 7,300,194; 6,755,547; 7,404,660; 8,215,816;
`7,434,974; 6,886,956; 6,508,563; PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`

`
`
`
`JOINT MOTION TO TERMINATE
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Petitioners
`
`Mercedes-Benz USA, LLC and Mercedes-Benz U.S.
`
`International,
`
`Inc.
`
`(“Mercedes” or “Petitioners”), and Patent Owner Innovative Displays Technology
`
`LLC (“IDT” or “Patent Owner”) jointly request termination of Inter Partes Review
`
`(“IPR”) of: U.S. Patent No. 7,384,177, Case No. IPR2015-00359; U.S. Patent No.
`
`7,300,194, Case No. IPR2015-00360; U.S. Patent No. 6,755,547, Case No. IPR
`
`2015-00361; U.S. Patent No. 7,404,660, Case No. IPR2015-00363; U.S. Patent
`
`No. 8,215,816, Case No. IPR2015-00366; U.S. Patent No. 7,434,974, Case No.
`
`IPR2015-00368; U.S. Patent No. 6,886,956, Case No. IPR2015-00994; U.S. Patent
`
`No. 7,384,177, Case No. IPR2015-01044; U.S. Patent No. 6,508,563, Case No.
`
`IPR2015-01067; U.S. Patent No. 7,404,660, Case No. IPR2015-01113; U.S. Patent
`
`No. 8,215,816, Case No. IPR2015-01114; and U.S. Patent No. 7,434,974, Case No.
`
`IPR2015-01115. Mercedes and IDT are collectively referred to herein as “Parties.”
`
`The Parties agree that each party bar its own fees and expenses.
`
`The respective IPRs are in their early stages as follows:
`
`Case No.
`
`IPR2015-00359
`
`IPR Petition
`Filing Date
`12/4/2014
`
`IDT Preliminary
`Response Date
`4/30/2015
`
`Institution
`Decision Date
`N/A
`
`IPR2015-00360
`
`12/4/2014
`
`4/30/2015
`
`5/22/2015
`
`IPR2015-00361
`
`12/4/2014
`
`4/30/2015
`
`IPR2015-00363
`
`12/4/2014
`
`4/30/2015
`
`N/A
`
`N/A
`
`1
`
`

`
`
`
`JOINT MOTION TO TERMINATE
`
`Case No.
`
`IPR2015-00366
`
`IPR Petition
`Filing Date
`12/4/2014
`
`IDT Preliminary
`Response Date
`5/2/2015
`
`Institution
`Decision Date
`N/A
`
`IPR2015-00368
`
`12/4/2014
`
`4/30/2015
`
`IPR2015-00994
`
`4/2/2015
`
`IPR2015-01044
`
`4/13/2015
`
`IPR2015-01067
`
`4/17/2015
`
`IPR2015-01113
`
`4/24/2015
`
`IPR2015-01114
`
`4/25/2015
`
`IPR2015-01115
`
`4/27/2015
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`No depositions have been taken. The Patent Owner has not filed any
`
`substantive paper, and the Patent Owner has submitted no declaration. The Parties
`
`have agreed to settle their dispute and have reached an agreement to terminate all
`
`of the aforementioned IPRs. The Settlement Agreement between the Parties has
`
`been made in writing and is filed separately as Exhibit 1026, concurrently with a
`
`Joint Request to Treat Agreement as Business Confidential Information Under 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). There are no collateral agreements
`
`referred to in the Parties’ Settlement Agreement.
`
`As stated in 35 U.S.C. § 317(a), because both Mercedes and IDT request this
`
`termination, it is understood that no estoppel under 35 U.S.C. § 315(e) shall attach
`
`to Petitioners Mercedes. As provided in 37 C.F.R. § 42.73(d)(3), because no
`
`2
`
`

`
`
`
`JOINT MOTION TO TERMINATE
`
`adverse judgment has been entered, it is also understood that, as to the Patent
`
`Owner IDT, no estoppel under 37 C.F.R. § 42.73(d)(3) shall attach to IDT.
`
`On June 23, 2015, the Parties advised the Board that the Parties had reached
`
`a settlement in this IPR, and the Parties sought authorization to file joint motions to
`
`terminate the proceedings, using a combined caption listing each of the affected
`
`IPRs. On June 24, 2015, the Parties received written authorization to file the joint
`
`motions to terminate with a combined caption.
`
`The Parties understood that they were also to file a separate paper requesting
`
`that the Settlement Agreement be treated as business confidential information as
`
`specified in 37 C.F.R. § 42.74(c).
`
`Termination of the aforementioned proceedings is appropriate as the parties
`
`have agreed to settle their disputes.
`
`The patents at issue here have been litigated between the parties in the
`
`following case:
`
`Description
`
`Docket No.
`
`Status
`
`IDT v. Mercedes-Benz
`U.S. International, Inc., et.
`al.
`
`2:14-cv-00535, EDTX
`
`Joint Motion to Dismiss
`with prejudice filed June
`22, 2015 and Order
`dismissing case entered
`June 23, 2015.
`
`No new litigation or proceeding involving the aforementioned patents is
`
`contemplated in the foreseeable future.
`
`3
`
`

`
`
`
`JOINT MOTION TO TERMINATE
`
`Termination of this proceeding is appropriate at this stage in the proceeding
`
`in view of the Settlement Agreement. The Settlement Agreement ends all patent
`
`disputes between the parties, including this proceeding. Moreover, as shown
`
`above, the Settlement Agreement resulted in the dismissal of the underlying civil
`
`action.
`
`Both Congress and the federal courts have expressed a strong interest in
`
`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
`
`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
`
`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed.
`
`Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950
`
`(1986). The U.S. Court of Appeals for the Federal Circuit also places a particularly
`
`strong emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
`
`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
`
`antagonism and hostility between parties). Moreover, the Board generally expects
`
`that a proceeding will terminate after the filing of a settlement. See, e.g., Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
`
`Maintaining this proceeding after Petitioner’s settlement with Patent Owner
`
`would discourage future settlements by removing a primary motivation for
`
`settlement: eliminating litigation risk by resolving the parties’ disputes and ending
`
`the pending proceedings between them. For patent owners, litigation risks include
`
`4
`
`

`
`
`
`JOINT MOTION TO TERMINATE
`
`the potential for an invalidity ruling against their patents. If a patent owner knows
`
`that an inter partes review will likely continue regardless of settlement, it creates a
`
`strong disincentive for the patent owner to settle.
`
`Additionally, it would not be appropriate for the Board to proceed to a final
`
`written decision under Section 318(a) in this case because this proceeding is unripe
`
`for a final written decision.
`
`Wherefore, IDT and Mercedes respectfully request termination of the inter
`
`partes review of: U.S. Patent No. 7,384,177, Case No. IPR2015-00359; U.S.
`
`Patent No. 7,300,194, Case No. IPR2015-00360; U.S. Patent No. 6,755,547, Case
`
`No. IPR 2015-00361; U.S. Patent No. 7,404,660, Case No. IPR2015-00363; U.S.
`
`Patent No. 8,215,816, Case No. IPR2015-00366; U.S. Patent No. 7,434,974, Case
`
`No. IPR2015-00368; U.S. Patent No. 6,886,956, Case No. IPR2015-00994; U.S.
`
`Patent No. 7,384,177, Case No. IPR2015-01044; U.S. Patent No. 6,508,563, Case
`
`No. IPR2015-01067; U.S. Patent No. 7,404,660, Case No. IPR2015-01113; U.S.
`
`Patent No. 8,215,816, Case No. IPR2015-01114; and U.S. Patent No. 7,434,974,
`
`Case No. IPR2015-01115.
`
`
`
`
`
`5
`
`

`
`Dated: June 30, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/s/ Scott W. Doyle
`
`Scott W. Doyle (Reg. No. 39176)
`Fried, Frank, Harris, Shriver &
`Jacobson LLP
`801 17th Street, N.W.
`Washington, DC 20006
`(202) 639-7326 (telephone)
`(202) 639-7003 (facsimile)
`scott.doyle@friedfrank.com
`Attorney for Petitioners
`
`
`
`
`
`/s/ Justin B. Kimble
`
`Justin B. Kimble (Reg. No. 58591)
`Bragalone Conroy P.C.
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`(214) 785-6673 (telephone)
`(214) 786-6680 (facsimile)
`JKimble-IPR@bcpc-law.com
`Attorney for Patent Owner
`
`
`
`/s/ George W. Webb III
`
`
`George W. Webb III (Reg. No. 60737)
`Ahmad, Zavitsanos, Anaipakos, Alavi &
`Mensing, P.C.
`1221 McKinney Street, Suite 3460
`Houston, TX 77010
`(713) 655-1101 (telephone)
`(713) 655-0062 (facsimile)
`gwebb@azalaw.com
`Attorney for Patent Owner
`
`6
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing document:
`
`JOINT MOTION TO TERMINATE PROCEEDINGS FOR INTER PARTES
`REVIEW OF U.S. PATENT NOS. 7,384,177; 7,300,194; 6,755,547; 7,404,660;
`8,215,816; 7,434,974; 6,886,956; 6,508,563 PURSUANT TO
`35 U.S.C. § 317,
`
`was served on this 30th day of June by electronic mail to the following:
`
`Patent Owner correspondence address of record:
`
`Donald L. Otto, Esq.
`Renner, Otto, Boisselle & Sklar, LLP
`1621 Euclid Avenue
`19th Floor
`Cleveland, OH 44115
`
`
`
`
`
`
`
`
`
` /s/ Scott W. Doyle
`Scott W. Doyle (Reg. No. 39176)
`Fried, Frank, Harris, Shriver & Jacobson
`LLP
`801 17th Street, N.W.
`Washington, DC 20006
`(202) 639-7326 (telephone)
`(202) 639-7003 (facsimile)
`scott.doyle@friedfrank.com
`Attorney for Petitioners
`
`7

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