`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`
`v.
`
`MATTEL, INC.,
`Patent Owner.
`
`
`Case IPR2018-00040
`Patent 7,487,850
`
`
`JOINT MOTION FOR TERMINATION
`
`
`
`Petitioner Dynacraft BCS, Inc. (“Petitioner”) and Patent Owner Mattel, Inc.
`
`(“Patent Owner”) jointly request termination of IPR2018-00040 (“IPR ’40”)
`
`directed to U.S. Patent No. 7,487,850 (“the ’850 patent”) under 35 U.S.C. § 317(a)
`
`and 37 C.F.R. § 42.72.
`
`On October 9, 2017, Petitioner filed four petitions for inter partes review of
`
`U.S. Patent No. 7,222,684 (“the ’684 patent”) (IPR2018-00038 (“IPR ’38”)), U.S.
`
`Patent No. 7,950,978 (“the ’978 patent”) (IPR2018-00039 (“IPR ’39”)), the ’850
`
`patent (IPR ’40), and U.S. Patent No. 7,621,543 (“the ’543 patent”) (IPR2018-
`
`00042 (“IPR ’42”)). On April 17, the Board instituted inter partes review in IPRs
`
`’38, ’39, and ’40 and denied institution in IPR ’42. No final written decision on
`
`the merits has been entered in IPRs ’38, ’39, and ’40. The Parties have settled all
`
`of their disputes relating to the ’684, ’978, ’850, and ’543 patents and reached an
`
`agreement to terminate IPRs ’38, ’39, and ’40.
`
`The Parties’ settlement agreement has been made in writing, and a true copy
`
`of it is being filed concurrently as Exhibit 1008. No other agreements, written or
`
`oral, exist between or among the Parties. The Parties jointly request that the
`
`settlement agreement be treated as business confidential information under 37
`
`C.F.R. § 42.74(c) and be kept separate from the files of the above captioned inter
`
`partes review proceeding under 35 U.S.C. § 317(b) and 37 C.F.R § 42.74(c). In
`
`
`
`view of that request, the settlement agreement has been filed for access by the
`
`“Parties and Board Only.”
`
`As stated in 35 U.S.C. § 317(a), because Petitioner and Patent Owner jointly
`
`request termination with respect to Petitioner, no estoppel under 35 U.S.C.
`
`§ 315(e) shall attach to Petitioner. As stated in 37 C.F.R. § 42.73(d)(3), because no
`
`adverse judgment has been entered as to Patent Owner, no estoppel shall attach to
`
`Patent Owner.
`
`
`I.
`
`Reasons Why Termination Is Appropriate
`
`Termination is proper under 35 U.S.C. § 317(a) because the Parties are
`
`jointly requesting termination and the Office has not yet “decided on the merits of
`
`the proceeding before the request for termination is filed.” Here, no decision on
`
`the merits has been made. Accordingly, the Parties are entitled to terminate this
`
`proceeding under § 317(a) upon their joint request.
`
`Concluding these proceedings at this early juncture as to all Parties promotes
`
`the Congressional goal of establishing a more efficient and streamlined patent
`
`system that limits unnecessary and counterproductive litigation costs. Permitting
`
`termination upon settlement provides increased certainty as to the outcome of these
`
`proceedings and helps promote settlement and create a timely, cost-effective
`
`alternative to litigation. See, “Changes to Implement Inter Partes Review
`
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
`
`2
`
`
`
`Covered Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680
`
`(Tuesday, August 14, 2012).
`
`II.
`
` Related District Court Litigation and Status
`
`The ’684, ’978, ’850, and ’543 patents are the subject of concurrent
`
`litigation captioned Fisher-Price, Inc. v. Dynacraft BSC, Inc., Case No. 4:17-cv-
`
`03745-PJH in United States District Court for the Northern District of California
`
`(“the Litigation”). The Litigation has been settled by the Parties and has been
`
`dismissed with prejudice according to the terms of the settlement agreement.
`
`Respectfully submitted,
`
`/ Larry L. Saret/
`Larry L. Saret, Reg. No. 27,674
`Arthur Gollwitzer III
`MICHAEL BEST & FRIEDRICH LLP
`444 West Lake St., Suite 3200
`Chicago, Illinois 60606
`Tel: 312.222.0800
`Fax: 312.222.0818
`
`Attorneys for Petitioner
`
`Dated: July 30, 2018
`
`/ John R. Hutchins (with consent)/
`John R. Hutchins, Reg. No. 43,686
`BANNER & WITCOFF, LTD.
`1100 13th St, NW, Suite 1200
`Washington, DC 20005
`Tel: 202.824.3147
`Fax: 202.824.3001
`
`Attorney for Patent Owner
`
`3
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that a copy of the foregoing
`
`document was served by electronic mail upon the following:
`
`John R. Hutchins (Reg. No. 43,686)
`Lead Counsel for Patent Owner
`Banner & Witcoff, Ltd.
`1100 13th St, NW, Suite 1200
`Washington, DC 20005
`jhutchins@bannerwitcoff.com
`
`Attorney for Mattel, Inc.
`
`Dated: July 30, 2018
`
`/ Larry L. Saret /
`Larry L. Saret, Reg. No. 27,674
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
