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