UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00913
`Patent No. 7,420,550 B2
`___________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND
`TO TREAT SETTLEMENT AGREEMENT AS
`BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`621916.1
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00913
`Patent No. 7,420,550 B2
`___________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND
`TO TREAT SETTLEMENT AGREEMENT AS
`BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`621916.1
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioners Sharp Corporation, Sharp
`
`Electronics Corporation, and Sharp Electronics Manufacturing Company of
`
`America, Inc. (collectively, “Sharp”) and Patent Owner Surpass Tech Innovation
`
`LLC (“Surpass”) jointly request termination, without prejudice or estoppel, of the
`
`Inter Partes Review of U.S. Patent No. 7,420,550, Case No. IPR2015-00913. The
`
`parties have been authorized by the Board, via email transmission, to file a joint
`
`motion to terminate this proceeding, and to move for the parties’ written settlement
`
`agreement to be treated as business confidential information pursuant to 35 U.S.C.
`
`§ 317(b).
`
`Sharp filed its petition for Inter Partes Review on March 20, 2015, and
`
`Surpass filed a preliminary response on July 1, 2015. The Inter Partes Review
`
`was subsequently instituted on September 9, 2015.
`
`The parties have settled their dispute and have reached agreement to
`
`terminate this Inter Partes Review prior to the filing of a Patent Owner Response.
`
`Termination of this proceeding is proper at this stage because (a) the Board has not
`
`decided the merits of this proceeding, (b) upon termination of Petitioners’
`
`involvement, no petitioner will remain in this proceeding, and (c) the parties are
`
`making this joint request under 35 U.S.C. § 317(a). For at least these reasons,
`
`termination of the Inter Partes Review is appropriate under 35 U.S.C. § 317(a) and
`
`37 C.F.R. § 42.74(a). The ‘550 Patent is also subject to pending Inter Partes
`
`621916.1
`
`1
`
`
`
`
`
`Review Case No. IPR2015-00887, which is not affected by the Settlement
`
`Agreement between Sharp and Surpass.
`
`In addition, The Office Patent Trial Practice Guide indicates that:
`
`There are strong public policy reasons to favor settlement between the
`parties to a proceeding. The Board will be available to facilitate
`settlement discussions, and where appropriate, may require a
`settlement discussion as part of the 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, and 35 U.S.C. 327. Office
`Patent Trial Practice Guide (Section II (N)).
`
`The Settlement Agreement between Sharp and Surpass has been made in
`
`writing, and a true and correct copy as required by 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(b) is being submitted concurrently herewith as Exhibit 2004. Sharp
`
`and Surpass request that this Settlement Agreement (Ex. 2004) be treated as
`
`“business confidential information” and be kept separate from the file of the
`
`involved patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The
`
`Parties jointly request that the Settlement Agreement (Ex. 2004) be made available
`
`only to Federal Government agencies on written request or to any person only on a
`
`showing of good cause.
`
`The ‘550 Patent is also the subject of litigation in the U.S. District Court for
`
`the District of Delaware, Surpass Tech Innovation LLC v. Sharp Corporation et al.
`
`621916.1
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`2
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`
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`(Civil Action No. 1:14-cv-00338-LPS) (“the ‘338 Case”). In addition to
`
`Petitioners, the defendants in the ‘338 case include Samsung Electronics Co., Ltd.,
`
`Samsung Electronics America, Inc., Sony Corporation, Sony Electronics Inc., Sony
`
`Corporation of America, Vizio, Inc (Del. Corp.), and Vizio, Inc. (Cal. Corp.). The
`
`District Court stayed the ‘338 Case on November 21, 2014. Petitioners and Patent
`
`Owner have settled the ‘338 Case with respect to all of the claims and
`
`counterclaims involving the ‘550 Patent, under the Settlement Agreement between
`
`Petitioners and Patent Owner. All of the parties to the ‘338 case jointly stipulated
`
`to the dismissal of all allegations relating to the ‘550 Patent in the ‘338 case. See
`
`JOINT STIPULATION FOR PARTIAL DISMISSAL OF CERTAIN CLAIMS
`
`AND COUNTERCLAIMS (D.I. 60, filed January 14, 2016) (Ex. 2005). On
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`January 19, 2016, the Delaware district court entered the joint stipulation.
`
`Accordingly, the ‘550 Patent is no longer at issue in the ‘338 case.
`
`The ‘550 Patent is also the subject of another litigation in the U.S. District
`
`Court for the District of Delaware, Surpass Tech Innovation LLC v. Samsung
`
`Display Co., Ltd. et al. (Civil Action No. 1:14-cv-00337-LPS) (“the ‘337
`
`Case”). The defendants in the ‘337 Case are Samsung Display Co., Ltd., Samsung
`
`Electronics co., Ltd., Samsung Electronics America, Inc., Sony Corporation, Sony
`
`Electronics Inc., and Sony Corporation of America. The District Court also stayed
`
`the ‘337 Case on November 21, 2014. The ‘337 Case does not involve Petitioners
`
`621916.1
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`3
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`
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`and is not affected by the Settlement Agreement between Petitioners and Patent
`
`Owner in this IPR proceeding.
`
`
`
`
`
`621916.1
`
`4
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`
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`Dated: January 20, 2016
`
`Respectfully submitted,
`
`By: /s/wayne m. helge____
`Wayne M. Helge
`Registration No. 56,905
`DAVIDSON BERQUIST
`JACKSON &
`GOWDEY, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`
`Counsel for Patent Owner
`
`By: /s/anthony f. lo cicero
`Anthony F. Lo Cicero
`Registration No.: 29,403
`AMSTER, ROTHSTEIN &
`EBENSTEIN
`LLP
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`Email: alocicero@arelaw.com
`
`Counsel for Petitioners
`
`
`
`
`
`621916.1
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`5
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`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on January 20, 2016, a true and correct copy of the
`
`foregoing document and exhibits is being served via email by consent to the
`
`Petitioners at the correspondence addresses of record as follows:
`
`Anthony F. Lo Cicero
`Reg. No. 29,403
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8110
`Facsimile: (212) 336–8001
`E-mail: alocicero@arelaw.com
`
`Brian A. Comack
`Reg. No. 45,343
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8098
`Facsimile: (212) 336–8001
`E-mail: Sharp-550IPR@arelaw.com
`
`By: /s/ Wayne M. Helge
` USPTO Reg. No. 56,905
` Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`621916.1
`
`6
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