`
`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 8
`Date Entered: February 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` TCL MULTIMEDIA TECHNOLOGY HOLDINGS, LTD.
`and TTE TECHNOLOGY, INC.
`Petitioners
`
`v.
`
` NICHIA CORPORATION,
`Patent Owner
`____________
`
`Case IPR2017-01998
`Patent 7,855,092 B2
`Case IPR2017-01999
`Patent 7,901,959 B2
`Case IPR2017-02000
`Patent 7,915,631 B2
`Case IPR2017-02001
`Patent 8,309,375 B21
`______________
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE and
`NABEEL U. KHAN, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER AUTHORIZING FILING OF MOTION TO TERMINATE
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This order is to be filed in each case. The parties are not authorized to use
`this style heading in any subsequent papers.
`
`
`
`
`IPR2017-01998; IPR2017-01999; IPR2017-02000; IPR2017-02001
`Patent 7,855,092 B2; 7,901,959 B2; 7,915,631 B2; 8,309,375 B2
`
`
`In e-mail correspondence on February 23, 2018, the parties advised
`the Board that a confidential settlement agreement had been reached in the
`above identified inter partes reviews. The parties may agree to settle any
`issue in a proceeding pursuant to a written agreement, a copy of which shall
`be filed with the Board before termination of the trial. 37 C.F.R. § 42.74(a)-
`(b). Any agreement or understanding between the patent owner and a
`petitioner, including any collateral agreements referred to in such agreement
`or understanding made in connection with, or in contemplation of the
`termination shall be in writing and a true copy of such agreement or
`understanding shall be filed in the Office before the termination of such
`proceeding as between the parties. 35 U.S.C. § 317(b). Any such agreement
`should be filed as a separate exhibit.
`These matters are in the preliminary stage. Patent Owner filed a
`Patent Owner Preliminary Response in each case, but we have not rendered
`decisions whether to institute a trial. The parties have identified no other
`related matters. Under these circumstances, it may be appropriate to enter
`judgment and terminate the proceeding without rendering a final written
`decision. 37 C.F.R. § 42.72
`The parties are authorized to file a Joint Motion to Terminate this
`proceeding. The Joint Motion to Terminate must update the Board
`concerning the status of any litigation or proceeding, including, but not
`limited to proceedings in the U.S. Patent and Trademark Office, involving
`the subject patent, and advise the Board whether any litigation or proceeding
`involving the subject patent is contemplated in the foreseeable future.
`The Joint Motion to Terminate also must include a copy of any
`agreement including any collateral agreements referred to in such agreement
`
`
`
`2
`
`
`
`IPR2017-01998; IPR2017-01999; IPR2017-02000; IPR2017-02001
`Patent 7,855,092 B2; 7,901,959 B2; 7,915,631 B2; 8,309,375 B2
`
`
`or understanding made in connection with, or in contemplation of the
`termination of the proceeding or include a statement certifying that there are
`no such collateral agreements or understandings. A party to a settlement may
`request that any written agreement be treated as business confidential
`information and be kept separate from the files of an involved patent. 35
`U.S.C. § 317(b); 37 C.F.R. § 42.74(c). The request must be filed with the
`settlement. Id.
`It is ORDERED that the parties are authorized to file a Joint Motion
`To Terminate the proceeding and a Joint Request That The Settlement
`Agreement Be Treated As Business Confidential Information.
`
`
`
`PETITIONERS:
`
`James M. Glass
`Raymond N. Nimrod
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`raynimrod@quinnemanuel.com
`
`PATENT OWNER:
`
`Catherine Nyarady
`Paul E. Cole
`PAUL, WEISS, RIFKIND,
` WHARTON & GARRISON LLP
`cnyarady@paulweiss.com
`dcole@paulweiss.com
`
`
`
`
`3
`
`
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