`
`__________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`
`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`
`Petitioner,
`
`
`
`v.
`
`LEGEND3D, INC.,
`
`Patent Owner
`
`
`
`__________________
`
`Case IPR2016-01243
`
`
`
`
`
`
`
`Patent 7,907,793 B1
`__________________
`
`PATENT OWNER'S AND PETITIONER’S JOINT NOTICE
`REGARDING STATUS OF THE RELATED UNITED STATES
`DISTRICT COURT CASE AND SETTLEMENT DISCUSSIONS
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2016-01243
`Patent 7,907,793 B1
`On January 17, 2017, 12:00 PM Eastern Time an Initial Conference
`
`Call in this proceeding was held pursuant to the Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48765-66 (August 14, 2012). Patent Owner
`Legend3D, Inc. ("Legend3D") and Petitioner Prime Focus Creative Services
`Canada Inc. (“Prime Focus”) (together, the “Parties”) provide the following
`Joint Statement Regarding the Status of the Related United States District
`Court, Central District of California (“USDC”), Case Number 2:15-cv-
`02340-MWF-PLA and Settlement Discussions as ordered by the Patent Trial
`and Appeal Board (PTAB) during the Initial Conference Call.
`United States District Court, Central District of California Case
`Summary (and related actions)
`A complaint was filed by Prime Focus on March 30, 2015, as to U.S.
`Patent No. 8,922,628 (“the ‘628 Patent”): Prime Focus Creative Services
`Canada, Inc. v. Legend3D, Inc., United States District Court, Central
`District of California, Case Number 2:15-cv-02340-MWF-PLA. On March
`28, 2016, Legend3D filed a petition for inter partes review of the ‘628
`Patent (IPR2016-00806), which was instituted as to all claims (claims 1-18)
`on September 19, 2016.
`On April 21, 2016, Legend3D timely filed its Answer and Counter
`Claim asserting infringement of U.S. Patent No. 7,907,793 (“the ‘793
`
`
`
`-1-
`
`
`
`Case IPR2016-01243
`Patent 7,907,793 B1
`Patent”). On April 22, 2016, Legend3D further requested leave to file a
`supplemental counterclaim on U.S. Patent No. 9,286,941 (“the ‘941
`Patent”). The Court denied the request for leave to file a supplemental
`counterclaim without prejudice. Prime Focus filed a petition for inter partes
`review of the ‘793 Patent on June 21, 2016, which matured into the present
`proceeding (IPR2016-1243). Prime Focus then filed a petition for inter
`partes review of eighteen of the thirty (30) claims of the ‘941 Patent on July
`26, 2016, (IPR2016-01491), and an institution decision in that proceeding is
`expected by Feb 13, 2017.
`On October 17, 2016, the Court stayed the proceedings as to claims
`and defenses related to the ‘628 Patent.
`On September 14, 2016, the Court stayed the proceedings as to the
`‘793 Patent, pending the decision in IPR2016-01243. The parties stipulated
`to agree to continue the stay after the PTAB instituted proceedings on
`December 20, 2016; the Court entered that stipulation on January 13, 2017.
`Settlement Discussions
`
`To date the parties have not had settlement discussions. The parties
`previously indicated to the Court that alternative dispute resolution was
`contemplated to occur after the completion of discovery. Discovery was
`stayed as a result of the IPR proceedings and remains stayed at this time.
`
`
`
`-2-
`
`
`
`By: /Danna J. Cotman/
`Danna J. Cotman, Cal Bar No.: 188245
`ARC IP Law, PC
`7744 Herschel Avenue
`La Jolla, CA 92037
`P. (858) 729-0800
`F. (858) 777-5425
`
`Case IPR2016-01243
`Patent 7,907,793 B1
`The parties currently do not have any settlement discussions scheduled.
`Dated: January 19, 2017
`
`Respectfully submitted,
`
`By: /Joseph J. Mayo/
`Joseph J. Mayo, Reg. No.: 53288
`ARC IP Law, PC
`7744 Herschel Avenue
`La Jolla, CA 92037
`P. (858) 442-5877
`F. (858) 777-5425
`
`Counsel for Patent Owner, Legend3D, Inc.
`
`By: /s/ Joshua Glucoft
`Joshua Glucoft (Reg. No. 67,696)
`Jonathan Kagan (Unopposed Pro Hac Vice
`motion pending)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 277-1010
`Fax: (310) 203-7199
`Email: PrimeFocusIPR@irell.com
`
`Attorneys for Petitioner Prime Focus
`Creative Services Canada Inc.
`
`
`
`
`
`
`-3-
`
`
`
`
`
`
`Case IPR2016-01243
`Patent 7,907,793 B1
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 Code of Federal Regulations § 42.6, the undersigned
`
`certifies that on January 19, 2017, a copy of the foregoing document was
`
`served by ELECTRONIC MAIL, as agreed to by the parties and on counsel
`
`of record identified below, and that this document was filed with the Patent
`
`Trial and Appeal Board via the PTAB End-to-End System.
`
`Joshua Glucoft, Esq.
`
`JGlucoft@irell.com
`PrimeFocusIPR@irell.com
`
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
`
`
`/s/ Marie L. Acosta
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