`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`___________
`
`IPR2015-00745, Patent No. 7,404,660
`IPR2015-00749, Patent No. 7,300,194
`IPR2015-00752, Patent No. 8,215,816
`IPR2015-00753, Patent No. 7,537,370
`IPR2015-00755, Patent No. 7,434,974
`IPR2015-00756, Patent No. 7,384,177
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`FOR INTER PARTES REVIEW OF
`U.S. PATENT NOS. 7,404,660; 7,300,194; 8,215,816; 7,537,370; 7,434,974;
`7,384,177 PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Petitioner Sony
`
`Corporation (“Sony” or “Petitioner”), and Patent Owner Innovative Display
`
`Technology LLC (“IDT” or “Patent Owner”) jointly request termination of Inter
`
`Partes Review (“IPR”) of: U.S. Patent No. 7,404,660, Case No. IPR2015-00745;
`
`U.S. Patent No. 7,300,194, Case No. IPR2015-00749; U.S. Patent No. 8,215,816,
`
`Case No. IPR2015-00752; U.S. Patent No. 7,537,370, Case No. IPR2015-00753;
`
`U.S. Patent No. 7,434,974, IPR2015-00755; U.S. Patent No. 7,384,177, Case
`
`No. IPR2015-00756. Sony and IDT are collectively referred to herein as “Parties.”
`
`The Parties agree that each party shall bear its own fees and expenses.
`
`The respective IPRs are in their early stages as follows:
`
`IPR Petition
`Filing Date
`2/17/2015
`
`IDT Preliminary
`Response Date
`5/26/2015
`
`Institution
`Decision Date
`N/A
`
`5/26/2015
`
`5/26/2015
`
`5/27/2015
`
`5/27/2015
`
`5/27/2015
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`Case No.
`
`IPR2015-00745
`
`IPR2015-00749
`
`IPR2015-00752
`
`IPR2015-00753
`
`IPR2015-00755
`
`2/17/2015
`
`2/17/2015
`
`2/17/2015
`
`2/18/2015
`
`IPR2015-00756
`
`2/18//2015
`
`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 settled their dispute and have reached an agreement to terminate all of the
`
`4169462_1.docx
`
`1
`
`
`
`
`
`aforementioned IPRs. The Settlement Agreement between the Parties has been
`
`made in writing and is filed separately as Exhibits 1029 (IPR 2015-00745); 1032
`
`(IPR 2015-00749); 1032 (IPR 2015-00752); 1032 (IPR 2015-00753); 1027 (IPR
`
`2015-00755); 1029 (IPR 2015-00756), 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 Sony and IDT request this
`
`termination, it is understood that no estoppel under 35 U.S.C. § 315(e) shall attach
`
`to Petitioner Sony. As provided in 37 C.F.R. § 42.73(d)(3), because no 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 August 3, 2015, the Parties advised the Board that the Parties had
`
`reached a settlement of their dispute, including these IPR requests, and the Parties
`
`sought authorization to file joint motions to terminate the proceedings. The Board
`
`advised the Parties that they are authorized to file a joint motion.
`
`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).
`
`4169462_1.docx
`
`2
`
`
`
`
`
`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
`Delaware Display Group
`LLC and Innovative
`Display Technologies LLC
`v. Sony Corporation, Sony
`Corporation of America,
`Sony Electronics Inc., and
`Sony Mobile
`Communications (USA)
`Inc.
`
`Docket No.
`13-cv-2111, D.Del.
`
`Status
`Joint Motion to Stay All
`Deadlines and Notice of
`Settlement filed August
`3, 2015.
`
`No new litigation or proceeding involving the aforementioned patents is
`
`contemplated in the foreseeable future.
`
`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. 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
`
`4169462_1.docx
`
`3
`
`
`
`
`
`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
`
`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.
`
`Wherefore, IDT and Sony respectfully request termination of the inter partes
`
`review of: U.S. Patent No. 7,404,660, Case No. IPR2015-00745; U.S. Patent
`
`No. 7,300,194, Case No. IPR2015-00749; U.S. Patent No. 8,215,816, Case
`
`No. IPR2015-00752; U.S. Patent No. 7,537,370, Case No. IPR2015-00753; U.S.
`
`Patent No. 7,434,974, IPR2015-00755; U.S. Patent No. 7,384,177, Case
`
`No. IPR2015-00756.
`
`
`
`4169462_1.docx
`
`4
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Gregory S. Gewirtz
`Gregory S. Gewirtz
`Registration No. 36,522
`Lerner, David, Littenberg, Krumholz &
`Mentlik, LLP
`600 South Avenue West
`Westfield, NJ 07090
`Tel: 908-518-6343
`Fax: 908-654-7866
`Email: ggewirtz.ipr@ldlkm.com
`Attorney for Petitioner
`
`
`
`
`
`/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
`
`
`
`
`5
`
`
`
`Dated: August 11, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`4169462_1.docx
`
`
`
`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. 7,404,660; 7,300,194; 8,215,816; 7,537,370;
`7,434,974; 7,384,177 PURSUANT TO 35 U.S.C. § 317
`
`was served on this 11th day of August 2015 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/ Gregory S. Gewirtz
`
`Gregory S. Gewirtz
`Registration No. 36,522
`Lerner, David, Littenberg, Krumholz &
`Mentlik, LLP
`600 South Avenue West
`Westfield, NJ 07090
`Tel: 908-518-6343
`Fax: 908-654-7866
`Email: ggewirtz.ipr@ldlkm.com
`Attorney for Petitioner