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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SANTA’S BEST AND POLYGROUP LIMITED (MCO),
`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 THE PROCEEDING WITH RESPECT
`TO POLYGROUP LIMITED (MCO) PURSUANT TO 35 U.S.C. § 317 AND
`37 C.F.R. § 42.74
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`IPR2016-01066
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Patent Owner Variable
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`Lighting, LLC (“Patent Owner”) and Petitioner Polygroup Limited (MCO)
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`(“Polygroup”) and Santa’s Best jointly move to terminate the present inter partes
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`review proceeding only with respect to Polygroup, in light of Polygroup’s and
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`Patent Owner’s (herein after Polygroup and Patent Owner are references as “the
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`parties”) resolution of their dispute relating to U.S. Patent No. 6,285,140. Santa’s
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`Best does not oppose termination of the instant proceeding with respect to
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`Polygroup. This Joint Motion was authorized by the Board by email on July 29,
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`2016.
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`Termination with respect to Polygroup is appropriate in the instant
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`proceeding because the dispute between the parties has been resolved, and further,
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`the parties have agreed to terminate Polygroup as a party to this inter partes
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`review. As required by 35 U.S.C. § 317(b), the parties are filing, concurrently
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`herewith a true copy of their Settlement and Patent License Agreement (executed
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`on June 28, 2016) as Exhibit 1012.1 Pursuant to Paragraph 4.5 of the Settlement
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`and Patent License Agreement, Patent Owner and Polygroup jointly agreed to
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`1 The Settlement and Patent License Agreement has been filed electronically via
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`E2E for “Board Only” to preserve confidentiality. Filing under the designation
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`“Board Only” was authorized in the Board’s July 29, 2016 email.
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`1
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`IPR2016-01066
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`terminate this proceeding with respect to Polygroup.2 Accordingly, Polygroup and
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`Patent Owner jointly request that this proceeding be terminated with respect to
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`Polygroup under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74. See Fandango, LLC et
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`al. v. Ameranth, Inc., CBM2014-00013, Paper 22, pp. 5-6 (PTAB March 24,
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`2014).
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” This proceeding is still in
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`its early stages. In fact, Patent Owner has not yet filed a preliminary response (and
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`thus, no institution decision has issued). Termination with respect to Polygroup
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`will not adversely affect any of the other parties or impair the Board in proceeding
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`to a decision on the merits. Moreover, strong public policy considerations favor
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`settlement between the parties to an inter partes review proceeding. See Office
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`Trial Practice Guide, Fed. Reg., Vol. 77, No. 157 at 48768 (Aug. 14, 2012). No
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`2 Additionally, pursuant to the Settlement and Patent License Agreement, the
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`parties jointly moved to dismiss the pending district court litigation between them
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`(Variable Lighting LLC v. Polygroup Services N.A. Inc., C.A. 16-00183-RGA)
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`with prejudice, and an Order doing so was entered on July 11, 2016. See 16-cv-
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`00183, D.I. 18.
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`2
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`IPR2016-01066
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`public interest or other factors weigh against termination of this proceeding with
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`respect to Polygroup.
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`The parties further request, pursuant to 37 C.F.R. § 42.74(c), that the
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`agreement (Ex. 1012) be treated as confidential business information and kept
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`separate from the files of the involved patent. The parties are filing, concurrently
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`herewith, a motion to seal pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c).
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`For the foregoing reasons, the parties jointly and respectfully request that the
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`instant proceeding be terminated with respect to Polygroup.
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`Respectfully submitted,
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`/Jason D. Eisenberg/
`Jason D. Eisenberg (Reg. No. 43,447)
`Lead Counsel for Petitioner
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`/Padmaja Chinta/
`Padmaja Chinta (Reg. No. 54,792)
`Lead Counsel for Patent Owner
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`3
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`IPR2016-01066
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing JOINT
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`MOTION TO TERMINATE THE PROCEEDING WITH RESPECT TO
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`POLYGROUP LIMITED (MCO) PURSUANT TO 35 U.S.C. § 317 AND 37
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`C.F.R. § 42.74 has been served on attorneys for Patent Owner, served via
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`electronic mail on August 17, 2016, to the following addresses provided by Patent
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`Owner:
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`Padmaja Chinta
`pchinta@cittonechinta.com
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`Henry Cittone
`hcittone@cittonechinta.com
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`Andrew Berks
`aberks@cittonechinta.com
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`Peter Fratangelo
`pfratangelo@cittonechinta.com
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`Respectfully submitted,
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`/Jason D. Eisenberg/
`Jason D. Eisenberg (Reg. No. 43,447)
`Lead Counsel for Petitioner
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`4
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`Dated: August 17, 2016
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