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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BMW OF NORTH AMERICA, LLC and
`BMW MANUFACTURING CO., LLC,
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`Petitioners,
`
`
`v.
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`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`
`
`Patent Owner.
`
`
`
`Inter Partes Review of U.S. Patent No. 6,886,956
`IPR2015-00934
`
`
`
`
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`JOINT MOTION TO TERMINATE PROCEEDING
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`IPR2015-00934
`U.S. Patent No. 6,886,956
`
`
`
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`Joint Motion to Terminate Proceeding
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`Pursuant to 35 U.S.C. §317(a), Petitioners BMW of North America, LLC
`
`and BMW Manufacturing Co., LLC (“Petitioners”) and Patent Owner Innovative
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`Display Technologies LLC (“Patent Owner”) jointly request termination of this
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`inter partes review of U.S. Patent No. 6,886,956 (“the ʼ956 patent”).
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`Termination is appropriate because the parties have entered into a settlement
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`agreement that resolves all underlying disputes between the parties with respect to
`
`the ʼ956 patent, including the present inter partes review proceeding IPR2015-
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`00934. The petition for review was filed on March 24, 2015. The Board has not
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`entered a decision regarding institution. “Generally the Board expects that a
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`proceeding will terminate after the filing of a settlement agreement.” Oracle Corp.
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`v. Cmty. United IP, LLC, CBM2013-00015, Paper 13 (July 25, 2013) (citing Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48756-66 (Aug. 14, 2012)).
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy of the
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`parties’ written
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`settlement agreement
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`is being
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`filed as an exhibit
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`contemporaneously with this joint motion to terminate. (Ex. 1007, Settlement
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`Agreement). The settlement agreement has been filed for access by the “Parties
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`and Board Only.” The parties desire that the settlement agreement be maintained
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`as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(c), and have filed a separate request to that effect. As part of the settlement
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`agreement, the parties have agreed to move for dismissal of the related district
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`1
`
`
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`IPR2015-00934
`U.S. Patent No. 6,886,956
`
`court litigation Innovative Display Technologies LLC v. BMW of North America,
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`Joint Motion to Terminate Proceeding
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`
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`LLC et al., No. 2:14-cv-00106 (E.D. Tex.), and to jointly request termination of the
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`pending inter partes review 2015-00933 filed by Petitioners against Patent
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`Owner’s U.S. Patent No. 6,508,563. The district court litigation was dismissed on
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`July 6, 2015. (Ex. 1008, Order to Dismiss with Prejudice).
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`The filing of this joint motion was authorized by the Board in an e-mail
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`communication on July 8, 2015.
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`For the foregoing reasons, Petitioners and Patent Owner jointly and
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`respectfully request that the Board terminate this proceeding in its entirety.
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`Date: July 9, 2015
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`2
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`Respectfully submitted,
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`
`
`
`
`/Jeffrey D. Sanok/
`Jeffrey D. Sanok
`Reg. No. 32169
`Jonathan M. Lindsay
`Reg. No. 45810
`Crowell & Moring LLP
`1001 Pennsylvania Avenue NW
`Washington, DC 20004-2595
`Tel.: (202) 624-2500
`Fax.: (202) 628-5116
`jsanok@crowell.com
`jlindsay@crowell.com
`
`Counsel for Petitioners
`BMW of North America, LLC and
`BMW Manufacturing Co., LLC
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`
`
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`IPR2015-00934
`U.S. Patent No. 6,886,956
`
`
`Date: July 9, 2015
`
`
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`
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`Joint Motion to Terminate Proceeding
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`
`
`
`
`/George W. Webb/
`George W. Webb III
`Reg. No. 60737
`Amir Alavi
`Pending Pro Hac Vice Motion
`Brian Simmons
`Pending Pro Hac Vice Motion
`Ahmad, Zavitsanos, Anaipakos, Alavi
`& Mensing P.C.
`1221 McKinney, Suite 3460
`Houston, TX 77010
`Tel.: (713) 655-1101
`Fax.: (713) 655-0062
`gwebb@azalaw.com
`aalavi@azalaw.com
`bsimmons@azalaw.com
`
`Counsel for Patent Owner
`Innovative Display Technologies LLC
`
`3
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`
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`IPR2015-00934
`U.S. Patent No. 6,886,956
`
`
`
`
`Joint Motion to Terminate Proceeding
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, on this 9th day of July 2015, true and correct
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`copies of the foregoing JOINT MOTION TO TERMINATE PROCEEDING,
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`together with Exhibits 1007 and 1008, were served by Petitioners via Federal
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`Express™ on the attorney of record for the patent owner, with a courtesy copy
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`being sent by electronic e-mail to the attorneys of record in the co-pending
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`litigation, at the following addresses:
`
`Attorney of Record
`for Patent Owner:
`
`
`Attorneys of Record
`in Co-Pending
`Litigation:
`
`
`
`George W. Webb III
`Reg. No. 60,797
`E-mail: gwebb@azalaw.com
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing PC
`1221 McKinney, Suite 3460
`Houston, TX 77010
`Tel: (713) 655-1101
`Facsimile: (713) 655-0062
`
`Demetrios Anaipakos
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing PC
`3460 One Houston Center
`1221 McKinney Street
`Houston, Texas 77010-2009
`
`
`
`/Jonathan Lindsay /
`Jonathan M. Lindsay
`Reg. No. 45,810
`CROWELL & MORING LLP
`1001 Pennsylvania Avenue NW
`Washington, DC 20004-2595
`Tel.: (949) 263-8400
`Fax.: (949) 263-8414
`JLindsay@crowell.com
`
`4
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