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`Paper No.
`Filed: May 27, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
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`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`________________
`
`IPR2015-00832
`Patent 7,434,974
`
`________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
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`
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`Joint Motion to Terminate Proceeding
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`INTRODUCTION
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`IPR2015-00832
` U.S. Patent No. 7,434,974
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`
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`Petitioner Toyota Motor Corporation (Toyota) and Patent Owner Innovative
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`Display Technologies LLC (IDT) have entered into a settlement agreement that
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`resolves all underlying disputes between the parties, including the inter partes
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`review proceeding IPR2015-00832, against U.S. Patent No. 7,434,974, currently
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`before the Board.
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`The Board authorized the parties to file a joint motion to terminate this
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`proceeding in a hearing held on May 22, 2015. Accordingly, the parties jointly
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`move to terminate this proceeding pursuant to 35 U.S.C. § 317 and 37 C.F.R.
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`§ 42.74.
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`The Board requested that the parties briefly explain why termination is
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`appropriate and provide the Board with a status update of any other matters
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`involving the ’974 Patent. The Board also requested submission of a true copy of
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`the parties’ agreement. The Parties consider the agreement Highly Confidential
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`Business Information. During the hearing on May 22, 2015, the Board also
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`authorized filing of a motion to hold the agreement confidential pursuant to 37
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`C.F.R. § 42.74(c).
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`THE SETTLEMENT AGREEMENT
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`The parties have entered into a Confidential Settlement Agreement (the
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`“Agreement”) settling their dispute involving eight (8) U.S. Patents, including U.S.
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`–1–
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`
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`Joint Motion to Terminate Proceeding
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`US. Patent No. 7,434,974
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`IPR2015-00832
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`Patent No. 7,434,974. The parties are filing a copy of the Agreement with this
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`Joint Motion to Terminate Proceeding in IPR2015-00832, as Exhibit 1012. In
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`addition, the parties have filed a request to treat the Agreement as Confidential
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`Business Information under 37 C.F.R. § 42.74(c). As part of the Agreement, the
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`related district court litigation, Innovative Display Technologies LLC v. Toyota
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`Motor Cap, Case No. 2: 14—cv-200-JRG (ED TX.) has been dismissed. (Exhibit
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`10 1 3).
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`The parties also agreed to jointly request termination of all pending inter
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`partes reviews filed by Petitioner Toyota against patents owned by IDT.
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`STATUS OF RELATED PROCEEDINGS
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`A. District Court Proceeding
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`The following is the only related proceeding between the parties:
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`Innovative Display
`Technologies LLC v.
`Toyota Motor Com. Inc.,
`Case No. 2: l4-cv-200-
`
`JRG (ED TX.)
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`20 1 5 .
`
`U-s.P Not.“
`6,508,563
`Unopposed motion to dismiss
`6,886,956
`without prejudice filed May 19,
`7,434,974
`2015 and Dismissal Order
`8,215,816
`entered May 20,
`
`7,384,177
`
`7,300,194
`
`7,404,660
`
`6,755,547
`
`There are no other district court proceedings related to US. Patent No.
`
`7,434,974 between the parties.
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`
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`Joint Motion to Terminate Proceeding
`
`US. Patent No. 7,434,974
`
`IPR2015-00832
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`B. United States Patent Office Proceedings
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`The following related inter partes review proceedings filed by Petitioner
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`Toyota are currently before the United States Patent and Trademark Office:
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`
`
` IPR2015-00843 7,300,194
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`IPR2015-00855
`
`
`
`IPR2015-00896
`
`IPR2015-00897
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`6,886,956
`
`7,404,660
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`As noted above, the parties have concurrently filed joint requests to
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`terminate each of the above inter partes reviews.
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`C. Foreign Proceedings
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`There are no foreign proceedings related to US. Patent No. 7,434,974
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`between the parties.
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`WHY TERMINATION IS APPROPRIATE
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`Termination of this proceeding is appropriate at this stage in the proceeding
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`in view of the Agreement. The Agreement ends all patent disputes between the
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`
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`Joint Motion to Terminate Proceeding
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`parties, including this proceeding. Moreover, as shown above, the Agreement
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`
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`IPR2015-00832
` U.S. Patent No. 7,434,974
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`resulted in the dismissal of the underlying civil action.
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`Both Congress and the federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
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`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
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`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed.
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`Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950
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`(1986). The U.S. Court of Appeals for the Federal Circuit also places a particularly
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`strong emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
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`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
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`antagonism and hostility between parties). Moreover, the Board generally expects
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`that a proceeding will terminate after the filing of a settlement. See, e.g., Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Maintaining this proceeding after Petitioner Toyota’s settlement with Patent
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`Owner IDT would discourage future settlements by removing a primary motivation
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`for settlement: eliminating litigation risk by resolving the parties’ disputes and
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`ending the pending proceedings between them. For patent owners, litigation risks
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`include the potential for an invalidity ruling against their patents. If a patent owner
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`knows that an inter partes review will likely continue regardless of settlement, it
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`creates a strong disincentive for the patent owner to settle.
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`
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`–4–
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`
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`Joint Motion to Terminate Proceeding
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`Additionally, it would not be appropriate for the Board to proceed to a final
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`IPR2015-00832
` U.S. Patent No. 7,434,974
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`
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`written decision under Section 318(a) in this case. The Board has not instituted
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`trial and IDT has not filed a Patent Owner’s Preliminary Response. Therefore, this
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`proceeding is unripe for a final written decision.
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`
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`CONCLUSION
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`For the foregoing reasons, the Petitioner Toyota and the Patent Owner IDT
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`jointly and respectfully request that the Board terminate this proceeding in its
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`entirety.
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`Date: 05/27/2015
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`Date: 05/27/2015
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`Respectfully submitted,
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`
`
`/P. Andrew Riley/
`
`
`P. Andrew Riley, Reg. No. 66,290
`Thomas W. Winland, Reg. No. 27,605
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Ave, NW
`Washington, DC 20001
`
`Attorneys for Petitioner
`Toyota Motor Corporation
`
`
`/Justin B. Kimble/
`
`
`Justin B. Kimble, Reg. No. 58,591
`Bragalone Conroy P.C.
`2200 Ross Ave.
`Suite 4500 - West
`Dallas, TX 75201
`
`Attorneys for Patent Owner
`Innovative Display Technologies LLC
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`
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`–5–
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`
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`Joint Motion to Terminate Proceeding
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`CERTIFICATE OF SERVICE
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`IPR2015-00832
` U.S. Patent No. 7,434,974
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`
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`The undersigned certifies a copy of the foregoing JOINT MOTION TO
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`TERMINATE IPR2015-00832 was served on May 27, 2015 via electronic mail
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`directed to the counsel of record for the Patent Owner at the following:
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`Dated: May 27, 2015
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`Justin Kimble, Lead Counsel
`jkimble@bcpc-law.com
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`Jeffrey Bragalone
`jbragalone@bcpc-law.com
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`Terry Saad
`tsaad@bcpc-law.com
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`Nicholas Kliewer
`nkliewer@bcpc-law.com
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`T. William Kennedy
`bkennedy@bcpc-law.com
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`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Clerk
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`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER LLP
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`
`
`–6–
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`
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