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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`Petitioner,
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`v.
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`LEGEND3D, INC.,
`Patent Owner.
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`U.S. Patent No. 7,907,793.
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`________________
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`Inter Partes Review No.: IPR2016-01243
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`___________________
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`JOINT MOTION TO TERMINATE PROCEEDINGS
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2016-01243
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`I.
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`Statement of Relief Requested
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`On June 12, 2018, the Board, by email, authorized the parties to file a Joint
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`Motion to Terminate and Joint Request to File Settlement Agreement as Business
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`Confidential Information, within 15 days.
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`Pursuant to the Board’s authorization, as well as 35 U.S.C. § 317(a), 37
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`C.F.R. § 42.72, and 37 C.F.R. § 42.74, Petitioner and Patent Owner jointly move the
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`Board to terminate the above captioned inter partes review (IPR) proceeding in its
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`entirety as a result of settlement between Petitioner and Patent Owner.
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`The parties have settled all of their disputes involving U.S. Patent No.
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`7,907,793 (“the ‘793 Patent”) or related to U.S. Patent No. 9,286,941 (“the ‘941
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`Patent”), which is a continuation-in-part of the ‘793 Patent. More specifically, the
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`parties have agreed to jointly request termination of this proceeding and IPR2018-
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`00803 related to the ‘941 Patent.1 The parties have also agreed to settle and dismiss
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`the related district court litigation (Prime Focus Creative Services Canada Inc. v.
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`Legend3D, Inc., Case No. 2:15-cv-02340-MWF-PLA (C.D. Cal.)).
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`Petitioner represents that it will no longer participate in this inter partes
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`review and will file no further papers. No litigation proceeding involving the ‘793
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`Patent or the ‘941 Patent is contemplated by the parties in the foreseeable future.
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`Pursuant to the Board’s June 12, 2018 authorization email and 37 C.F.R. §
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`42.74(b), the parties’ settlement agreement and any collateral agreements made in
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`contemplation of termination of the proceeding are in writing, and true and correct
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`copies of such documents are being filed herewith as Exhibit 1041 (Confidential).
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`Pursuant to the Board’s June 12, 2018 authorization email and 37 C.F.R. §
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`42.74(c), the parties are filing concurrently herewith a separate request that the
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`1 The parties are submitting a Joint Motion to Terminate Proceedings in each of
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`IPR2016-01243 and IPR2018-00803.
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`Case No. IPR2016-01243
`U.S. Patent 7,907,793
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`IPR2016-01243
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`settlement agreement being filed herewith (Ex. 1041 (Confidential)) be treated as
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`business confidential information and be kept separate from the files of the involved
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`patent. See also 35 U.S.C. 317(b). The parties also hereby jointly request that the
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`settlement agreement be treated as business confidential information and be kept
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`separate from the files of the involved patents. See 35 U.S.C. 317(b), 37 C.F.R. §
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`42.74(c).
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`II.
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`Statement of Facts
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`Petitioner filed this IPR petition on June 21, 2016. On December 18, 2017,
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`the Board issued its Final Written Decision (Paper 54). On January 16, 2018,
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`Petitioner filed a request for rehearing (Paper 55, see also Papers 57-58). The Board
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`has not yet issued a decision on Petitioner’s request for rehearing.
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`In June 2018, Petitioner and Patent Owner entered into a settlement
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`agreement. See Ex. 1041 (Confidential). Under the terms of the settlement
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`agreement, Petitioner agreed to terminate IPR No. IPR2016-01243.
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`III. Related District Court Litigation
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`The ‘793 Patent is currently the subject of the following ongoing litigation:
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`Prime Focus Creative Services Canada Inc. v. Legend3D, Inc., Case No. 2:15-cv-
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`02340-MWF-PLA (C.D. Cal.), which is stayed and which, under the terms of the
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`settlement, the parties have agreed to request dismissal of all claims and
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`counterclaims related to the ‘793 or ‘941 Patent with prejudice. There are no
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`additional parties in the related district court litigation, and there is no other
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`litigation involving the ‘793 Patent or the ‘941 Patent.
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`IV. Related Inter Partes Review
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`Petitioner filed IPR2018-00803 related to the ‘941 Patent, which is a
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`continuation-in-part of the ‘793 Patent. The parties are also jointly moving to
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`terminate that IPR, concurrently with this Joint Motion.
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`IPR2016-01243
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`V.
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`Joint Statement Regarding Why Termination Is Appropriate
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`Section 317(a) provides: “An inter partes review instituted under this chapter
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`shall be terminated with respect to any petitioner upon the joint request of the
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`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.” 35 U.S.C. § 317(a). It further
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`provides: “If no petitioner remains in the inter partes review, the Office may
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`terminate the review or proceed to a final written decision under section 318(a).” Id.
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`Similarly, 37 C.F.R. § 42.72 provides that “[t]he Board may terminate a trial without
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`rendering a final written decision, where appropriate, including where the trial is
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`consolidated with another proceeding or pursuant to a joint request under 35 U.S.C.
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`317(a).” The Trial Practice Guide additionally counsels that “[t]here are strong
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`public policy reasons to favor settlement between the parties to a proceeding” and
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`that the Board “expects that a proceeding will terminate after the filing of a
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`settlement agreement, unless the Board has already decided the merits of the
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`proceeding. 35 U.S.C. 317(a), as amended, and 35 U.S.C. 327.” Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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`Petitioner represents that it will no longer participate in this inter partes
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`review and will file no further papers. On June 9, 2018, Petitioner informed the
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`Board by email that the parties agreed to settle. The parties have settled all their
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`disputes involving the ‘793 Patent and the ‘941 Patent, including all related
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`litigation and United States Patent Office proceedings. On June 12, 2018, the Board
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`authorized the parties to file this Joint Motion as well as the Joint Request the
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`parties are filing concurrently herewith. No further litigation proceeding involving
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`the ‘793 Patent or the ‘941 Patent is contemplated by the parties in the foreseeable
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`future.
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`IPR2016-01243
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`A. The Board Should Terminate This IPR Proceeding In Its Entirety
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`The Board should terminate the proceedings with respect to Prime Focus, the
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`sole Petitioner in this proceeding. Moreover, because no petitioner remains after
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`termination with respect to Prime Focus, the Board should exercise its discretion
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`and terminate review in its entirety under 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72,
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`42.74.
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`In the past, the Board has terminated the entire proceedings based on joint
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`motions to terminate even after the merits had been fully briefed and the matter was
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`ready for oral argument and even after oral argument. See, e.g., Toyota Motor Corp.
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`v. Blitzsafe Tex. LLC, IPR2016-00421, Paper 28 (Feb. 21, 2017) (granting motion to
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`terminate even after all substantive papers were filed, “particularly in light of the
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`fact that a final written decision is not due until more than four months from now”);
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`Plaid Techs., Inc. v. Yodlee, Inc., IPR2016-00273, Paper 29 (Feb. 8, 2017) (granting
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`motion to terminate because “the parties' joint motions to terminate were filed prior
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`to the oral hearings in these cases”); Apex v. Resmed, IPR201-00512, Paper 39
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`(Sept. 12, 2014) (granting joint motion to terminate after the parties had fully
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`briefed the matter); Rackspace Hosting, Inc. v. Clouding IP, LLC, CBM2014-00034,
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`Paper 28 (Dec. 9, 2014) (granting motion to terminate after close of evidentiary
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`record and less than ten days before trial); Volution v. Versata Software, CMB2013-
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`00018, Paper 52 (June 17, 2014) (granting motion to terminate after oral argument).
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`The Board has not yet issued its decision on Petitioner’s request for rehearing.
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`Accordingly, termination of the entire proceeding would save the Board
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`administrative resources. Additionally, termination of the entire proceeding would
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`also reduce the burden on the parties.
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`B. Written Settlement Statement
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`Pursuant to 37 C.F.R. §§ 42.74(b), 42.74(c), the parties are filing herewith as
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`Exhibit 1041 (Confidential) a true copy of the settlement agreement entered between
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`IPR2016-01243
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`the parties in June 2018. The settlement agreement was entered into in
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`contemplation of termination of this proceeding. Exhibit 1041 is “in writing and a
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`true copy shall be filed with the Board before the termination of the trial.” 37 C.F.R.
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`§ 42.74(b). Exhibit 1041 constitutes the parties’ settlement agreement and any
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`collateral agreements made in contemplation of termination of the proceeding.
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`Therefore, by submitting Ex. 1041, the parties have complied fully with 37 C.F.R. §
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`42.74(b). Namely, Exhibit 1041 constitutes the parties’ settlement agreement made
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`in contemplation of termination of the proceeding. Exhibit 1041 reflects the parties’
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`final settlement and resolution of all disputes in this matter between the parties, and
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`there are no other collateral agreements or understandings made in connection with,
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`or in contemplation of, the termination sought. See 35 U.S.C. 317(b); 37 C.F.R. §
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`42.74(b).
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`VI. Conclusion
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`Petitioner and Patent Owner respectfully request that the Board grant the
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`parties’ Joint Motion to Terminate this proceeding in its entirety and grant the
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`request to treat the settlement agreement between the parties as business confidential
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`information.
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`10499479
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`Dated: June 14, 2018
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`Respectfully submitted,
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`/Daniel N. Yannuzzi/
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`Daniel N. Yannuzzi, Reg. No. 36,727
`Sheppard Mullin LLP
`Attorneys for Petitioner
`Legend3D, Inc.
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`IPR2016-01243
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`Dated: June 14, 2018
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`Respectfully submitted,
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`/Joshua Glucoft/
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`Joshua Glucoft, Reg. No. 67,696
`Irell & Manella LLP
`Attorneys for Petitioner
`Prime Focus Creative Services Canada
`Inc.
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`10499479
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`IPR2016-01243
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned hereby certifies that on June
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`14, 2018, a copy of the foregoing JOINT MOTION TO TERMINATE
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`PROCEEDINGS was served electronically on the following counsel via the
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`email addresses listed below:
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`10499479
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`Joshua Glucoft (Reg. No. 67,696)
`Irell & Manella LLP
`1800 Avenue of the Stars,
`Suite 900
`Los Angeles, CA 90067-4276
`Tel: 310.203.7189
`Fax: 310.203.7199
`E-mail: JGlucoft@Irell.com
`PrimeFocusIPR@irell.com
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`Michael Fleming, Esq. (Reg. No. 67,933)
`Irell & Manella LLP
`1800 Avenue of the Stars,
`Suite 900
`Los Angeles, CA 90067-4276
`Tel: 310.203.7915
`Fax: 310.556.5258
`E-mail: MFleming@Irell.com
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`Lead Counsel
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`Backup Counsel
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`/Kristina Grauer/
`Kristina Grauer
`SHEPPARD MULLIN RICHTER &
`HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Tel.: (858) 720-8900
`Fax: (858) 509-3691
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