`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SANTA’S BEST
`Petitioner,
`
`v.
`
`VARIABLE LIGHTING LLC
`Patent Owner.
`____________
`
`Case IPR2016-01066
`Patent 6,285,140
`____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case No. IPR2016-01066
`Patent No. 6,285,140
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Santa’s Best
`
`and Patent Owner Variable Lighting (“the Parties”) jointly request termination of
`
`the inter partes review of U.S. Patent No. 6,285,140 (“the ’140 patent”), Case No.
`
`IPR2016-01066. This motion was authorized by the United States Patent Trial and
`
`Appeal Board (“the Board”) via email on April 12, 2017.
`
`I.
`
`Termination is Appropriate
`
`Variable Lighting has granted Santa’s Best an irrevocable SETTLEMENT
`
`AGREEMENT and full release from any liability with respect to the ’140 patent
`
`(“the Agreement”), and, as part of the Agreement, the Parties have agreed to
`
`request termination of this inter partes review proceeding. Ex. 1013. Termination
`
`is therefore appropriate because the dispute between the Parties has been resolved
`
`and both the Petitioner and Patent Owner support termination of the proceeding.
`
`Additionally, termination under 35 U.S.C. § 317(a) is proper because, to the
`
`parties’ knowledge, the Office has not yet “decided the merits of the proceeding
`
`before the request for termination is filed.”
`
`The Parties’ request to terminate is not contingent on any future event.
`
`Termination of these proceedings also furthers the public policy favoring
`
`settlement. The Board has stated an expectation that proceedings before it will be
`
`terminated after the filing of a settlement agreement: “There are strong public
`
`policy reasons to favor settlement between the parties to a proceeding. . . . The
`
`- 1 -
`
`
`
`Case No. IPR2016-01066
`Patent No. 6,285,140
`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.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)
`
`(citing 35 U.S.C. 317(a)) (emphasis added). Additionally, 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
`
`[Federal Rule of Civil Procedure] 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). Accordingly, the Board
`
`should terminate this proceeding as to both Parties.
`
`By contrast, maintaining this proceeding after Petitioner’s resolution of its
`
`dispute with the Patent Owner would discourage future settlements by removing a
`
`primary motivation for settlement: eliminating litigation risk. 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. Indeed, the
`
`Board has granted joint motions to terminate as to both Parties even when the
`
`proceeding was at a late stage, after oral argument. Apple Inc. v. Nagravision SA,
`
`Case IPR2015-00971, Paper 30 at 2-3 (PTAB Sept. 7, 2016); Clio USA, Inc., v.
`
`The Proctor & Gamble Co., Case IPR2013-00438, Paper 57 at 2-3 (PTAB Oct. 31,
`
`- 2 -
`
`
`
`Case No. IPR2016-01066
`Patent No. 6,285,140
`2014); Volusion Inc. v. Versata Software Inc., Case CBM2013-00018, Paper 52 at
`
`2 (PTAB June 17, 2014).
`
`Accordingly, pursuant to the terms of the Agreement, the Parties respectfully
`
`request that the Board terminate this review.
`
`II. The Parties Have Resolved All Related Cases
`The Parties have also resolved the issues in all pending cases, which are
`
`limited to this review.
`
`Further, Patent Owner has resolved all disputes in all of the district court
`
`suits and each suit is dismissed:
`
`• Variable Lighting LLC v. Polygroup Services N.A., Inc., No. 1:16-cv-
`
`00183 (D. Del.), filed March 23, 2016, dismissed July 11, 2016. [U.S.
`
`Patent Nos. 6285140 by Ruxton , 8203275 by Ruxton, and 8390206 by
`
`Ruxton.]
`
`• Variable Lighting v. Polygroup Ltd., et al.¸No. 1:16-cv-00162 (D.
`
`Del.), filed March 16, 2016, dismissed March 23, 2016. [U.S. Patent
`
`No. 6285140 by Ruxton]
`
`• Variable Lighting LLC v. Kmart Corporation, et al., No. 1:15-cv-
`
`00426 (D. Del.), filed May 27, 2015, dismissed August 8, 2016. [U.S.
`
`Patent Nos. 6285140 by Ruxton , 8203275 by Ruxton, and 8390206 by
`
`Ruxton.]
`
`- 3 -
`
`
`
`III. Other Related Proceedings
`There are no other district court or USPTO proceedings between the parties.
`
`Case No. IPR2016-01066
`Patent No. 6,285,140
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner and Patent Owner jointly request that
`
`the Board terminate this proceeding in its entirety.
`
`Dated: April 13, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Jason Eisenberg /
`Jason D. Eisenberg (Reg No. 43,447)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`Attorney for Petitioner, Santa’s Best
`
`/Padmaja Chinta /
`Padmaja Chinta (Reg No. 54,792)
`CITTONE & CHINTA LLP
`11 Broadway, Suite 615
`New York, NY 10004
`Tel. 212-710-5619
`aberks@cittonechinta.com
`
`Attorney for Patent Owner, Variable Lighting LLC
`
`- 4 -
`
`
`
`Case No. IPR2016-01066
`Patent No. 6,285,140
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`
`
`
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R.
`
`§ 42.74 was served electronically via e-mail on April 13, 2017, in its entirety on the
`
`following counsel of record for the Petitioner:
`
`Padmaja Chinta (Lead Counsel)
`Henry Cittone (Back-Up Counsel)
`Andrew Berks (Back-Up Counsel)
`Peter Fratangelo (Back-Up Counsel)
`
`pchinta@cittonechinta.com
`hcittone@cittonechinta.com
`aberks@cittonechinta.com
`pfratangelo@cittonechinta.com
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Jason Eisenberg /
`Jason D. Eisenberg (Reg No. 43,447)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`Attorney for Petitioner, Santa’s Best
`
`
`
`
`
`
`Dated: April 13, 2017
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
