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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SANTA’S BEST
`Petitioner,
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`v.
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`VARIABLE LIGHTING LLC
`Patent Owner.
`____________
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`Case IPR2016-01066
`Patent 6,285,140
`____________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`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
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`and Patent Owner Variable Lighting (“the Parties”) jointly request termination of
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`the inter partes review of U.S. Patent No. 6,285,140 (“the ’140 patent”), Case No.
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`IPR2016-01066. This motion was authorized by the United States Patent Trial and
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`Appeal Board (“the Board”) via email on April 12, 2017.
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`I.
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`Termination is Appropriate
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`Variable Lighting has granted Santa’s Best an irrevocable SETTLEMENT
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`AGREEMENT and full release from any liability with respect to the ’140 patent
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`(“the Agreement”), and, as part of the Agreement, the Parties have agreed to
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`request termination of this inter partes review proceeding. Ex. 1013. Termination
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`is therefore appropriate because the dispute between the Parties has been resolved
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`and both the Petitioner and Patent Owner support termination of the proceeding.
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`Additionally, termination under 35 U.S.C. § 317(a) is proper because, to the
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`parties’ knowledge, the Office has not yet “decided the merits of the proceeding
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`before the request for termination is filed.”
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`The Parties’ request to terminate is not contingent on any future event.
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`Termination of these proceedings also furthers the public policy favoring
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`settlement. The Board has stated an expectation that proceedings before it will be
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`terminated after the filing of a settlement agreement: “There are strong public
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`policy reasons to favor settlement between the parties to a proceeding. . . . The
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`Case No. IPR2016-01066
`Patent No. 6,285,140
`Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding.”
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)
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`(citing 35 U.S.C. 317(a)) (emphasis added). Additionally, Congress and the federal
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`courts have expressed a strong interest in encouraging settlement in litigation. See,
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`e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of
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`[Federal Rule of Civil Procedure] 68 is to encourage the settlement of litigation.”);
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`Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors
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`settlement of cases.”), cert. denied, 479 U.S. 950 (1986). Accordingly, the Board
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`should terminate this proceeding as to both Parties.
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`By contrast, maintaining this proceeding after Petitioner’s resolution of its
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`dispute with the Patent Owner would discourage future settlements by removing a
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`primary motivation for settlement: eliminating litigation risk. For patent owners,
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`litigation risks include the potential for an invalidity ruling against their patents. If
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`a patent owner knows that an inter partes review will likely continue regardless of
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`settlement, it creates a strong disincentive for the patent owner to settle. Indeed, the
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`Board has granted joint motions to terminate as to both Parties even when the
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`proceeding was at a late stage, after oral argument. Apple Inc. v. Nagravision SA,
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`Case IPR2015-00971, Paper 30 at 2-3 (PTAB Sept. 7, 2016); Clio USA, Inc., v.
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`The Proctor & Gamble Co., Case IPR2013-00438, Paper 57 at 2-3 (PTAB Oct. 31,
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`Case No. IPR2016-01066
`Patent No. 6,285,140
`2014); Volusion Inc. v. Versata Software Inc., Case CBM2013-00018, Paper 52 at
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`2 (PTAB June 17, 2014).
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`Accordingly, pursuant to the terms of the Agreement, the Parties respectfully
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`request that the Board terminate this review.
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`II. The Parties Have Resolved All Related Cases
`The Parties have also resolved the issues in all pending cases, which are
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`limited to this review.
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`Further, Patent Owner has resolved all disputes in all of the district court
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`suits and each suit is dismissed:
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`• Variable Lighting LLC v. Polygroup Services N.A., Inc., No. 1:16-cv-
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`00183 (D. Del.), filed March 23, 2016, dismissed July 11, 2016. [U.S.
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`Patent Nos. 6285140 by Ruxton , 8203275 by Ruxton, and 8390206 by
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`Ruxton.]
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`• Variable Lighting v. Polygroup Ltd., et al.¸No. 1:16-cv-00162 (D.
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`Del.), filed March 16, 2016, dismissed March 23, 2016. [U.S. Patent
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`No. 6285140 by Ruxton]
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`• Variable Lighting LLC v. Kmart Corporation, et al., No. 1:15-cv-
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`00426 (D. Del.), filed May 27, 2015, dismissed August 8, 2016. [U.S.
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`Patent Nos. 6285140 by Ruxton , 8203275 by Ruxton, and 8390206 by
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`Ruxton.]
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`III. Other Related Proceedings
`There are no other district court or USPTO proceedings between the parties.
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`Case No. IPR2016-01066
`Patent No. 6,285,140
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`CONCLUSION
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`For the foregoing reasons, Petitioner and Patent Owner jointly request that
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`the Board terminate this proceeding in its entirety.
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`Dated: April 13, 2017
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`Respectfully Submitted,
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`/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
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`Attorney for Petitioner, Santa’s Best
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`/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
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`Attorney for Patent Owner, Variable Lighting LLC
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`Case No. IPR2016-01066
`Patent No. 6,285,140
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing JOINT MOTION TO
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`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R.
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`§ 42.74 was served electronically via e-mail on April 13, 2017, in its entirety on the
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`following counsel of record for the Petitioner:
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`Padmaja Chinta (Lead Counsel)
`Henry Cittone (Back-Up Counsel)
`Andrew Berks (Back-Up Counsel)
`Peter Fratangelo (Back-Up Counsel)
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`pchinta@cittonechinta.com
`hcittone@cittonechinta.com
`aberks@cittonechinta.com
`pfratangelo@cittonechinta.com
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`Respectfully Submitted,
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`/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
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`Dated: April 13, 2017
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