`Date Filed: January 5, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________________
`
`
`
`VIZIO, INC.,
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`
`__________________________________
`
`Case No.: IPR2017-00142
`Patent No.: 7,752,649
`__________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner VIZIO, Inc. (“VIZIO”) and Patent
`
`Owner Personalized Media Communications, LLC (“PMC”) jointly request
`
`termination of the inter partes review (“IPR”) of U.S. Patent No. 7,752,649 (the
`
`“’649 Patent”), Case No. IPR2017-00142.
`
`This IPR has not been instituted. VIZIO filed its petition for IPR on October
`
`26, 2016. PMC has not filed a preliminary response, and one is not due until
`
`February 8, 2017. The parties have settled their disputes, and have reached
`
`agreement to terminate this IPR.
`
`In accordance with 37 C.F.R. § 42.20(b), the parties sought authorization
`
`from the Board to file this motion. The Board authorized the filing of this motion
`
`in the Order issued on January 4, 2017.
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`Termination of this proceeding is proper because the parties are jointly
`
`requesting termination and the Office has not yet “decided the merits of the
`
`proceeding before the request for termination is filed.” 35 U.S.C. § 317(a).
`
`Furthermore, the co-pending district court litigation in the Eastern District of Texas
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`(Case No.: 2:15-cv-01206, consolidated with 2:15-cv-01366) has been dismissed
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`with prejudice.
`
`The parties in the co-pending district court litigation in the Eastern District
`
`of Texas (Case No.: 2:15-cv-01206) (“the ’1206 Case”) are Envision Peripherals,
`
`Inc.; Hon Hai Precision Industry (Taiwan) Co., Ltd.; TPV Electronics (Fujian) Co.
`
`
`
`Ltd.; TPV Int’l (USA); Inc.; TPV Technology Co., Limited; Top Victory
`
`Electronics (Fujian) Co. Ltd.; Top Victory Electronics (Taiwan) Co. Ltd.; VIZIO,
`
`Inc.; Wistron Corporation; Wistron InfoComm Technology (Texas) Corp.; and
`
`Wistron InfoComm Technology (America) Corp. This case has been dismissed
`
`with prejudice with respect to all parties. The ’1206 Case was consolidated with
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`Case No. 2:15-cv-01366 (EDTX), in which Apple, Inc. is the only other party.
`
`That case is still pending before Judge Gilstrap with respect to Apple, Inc.
`
`PMC has also asserted the ’649 Patent in two other pending district court
`
`cases: Case No. 2:15-cv-01754 (EDTX) against Samsung Electronics America,
`
`Inc. and Samsung Electronics Co., Ltd. (EDTX) and Case No. 2:16-cv-00105
`
`(EDTX) against Funai Corporation, Inc.; Funai Electric Co., Ltd.; and P&F USA,
`
`Inc. Both cases are currently still pending.
`
`The ’649 Patent is also currently pending before the Board in IPR2016-
`
`00753 (trial instituted September 20, 2016), IPR 2017-00141 (petition filed
`
`October 26, 2016), IPR2017-00289 (petition filed November 18, 2016), and
`
`IPR2017-00290 (petition filed November 18, 2016).
`
`
`
`
`
`
`
`The settlement agreement between VIZIO and PMC has been made in
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`writing, and a true and correct copy shall be filed with this Office as confidential
`
`business information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)-(c).
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Cono A. Carrano
`
`Cono A. Carrano (Reg. No. 39,623)
`David C. Vondle (Reg. No. 54,515)
`Akin Gump Strauss Hauer & Feld LLP
`1333 New Hampshire Avenue, NW
`Washington, D.C. 20036
`Phone: (202) 887-4000
`Fax: (202) 887-4288
`Attorneys For VIZIO, Inc.
`
`
`
`/s/ Dmitry Kheyfits
`
`Dmitry Kheyfits (Reg. No. 57,244)
`Andrey Belenky (Reg. No. 59,194)
`Kheyfits P.C.
`1140 Avenue of the Americas, 9th Floor
`New York, NY 10036
`Phone: (212) 203-5399
`Fax: (212) 203-6445
`Attorneys For Personalized Media
`Communications, LLC
`
`Dated: January 5, 2017
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that it caused to be
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`served a true and correct copy of the foregoing JOINT MOTION TO
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`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 on Patent
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`Owner’s counsel of record via email as follows:
`
`Dmitry Kheyfits
`dkheyfits@hkeyfits.com
`
`Andrey Belenky
`abelenky@hkeyfits.com
`
`Respectfully submitted,
`
`By: /s/ Cono A. Carrano
`Cono A. Carrano (Reg. No. 39,623)
`
`
`
`
`Date: January 5, 2017
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