UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LOWE’S COMPANIES, INC.,
`LOWE’S HOME CENTERS, LLC, and L G SOURCING, INC.,
`Petitioners,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00066
`Patent No. 7,915,631
`_______________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LOWE’S COMPANIES, INC.,
`LOWE’S HOME CENTERS, LLC, and L G SOURCING, INC.,
`Petitioners,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00066
`Patent No. 7,915,631
`_______________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`Case IPR2018-00066
`Patent No. 7,915,631 B2
`
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Patent Owner
`
`Nichia Corporation (“Patent Owner”) and Petitioners Lowe’s Companies, Inc.,
`
`Lowe’s Home Centers, LLC, and L G Sourcing, Inc. (“Petitioners”) jointly move
`
`the Patent Trial and Appeal Board (“Board”) to terminate the following inter
`
`partes review proceeding in its entirety:
`
`IPR Case No.
`IPR2018-00066
`
`Patent No.
`7,915,631
`
`On May 15, 2018, the parties notified the Board by email that they had
`
`agreed in principle to a settlement that would affect this IPR proceeding and were
`
`negotiating a definitive settlement agreement.
`
`On June 13, 2018, the parties notified the Board by email that the parties had
`
`reached a final settlement and requested authorization to file the present motion.
`
`On June 15, 2018, the Board authorized the parties to do so. Pap.9. In support of
`
`the Motion to Terminate Proceeding, the parties state as follows:
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), Petitioners and
`
`Patent Owner jointly file herewith a true copy of their confidential settlement
`
`agreement. Because the settlement agreement is confidential, the parties
`
`respectfully request that it be treated as business confidential information, kept
`
`separate from the underlying patent file, and made available only as provided in 35
`
`
`
`
`
`
`Case IPR2018-00066
`Patent No. 7,915,631
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties have filed herewith a
`
`separate paper setting forth this request.
`
`
`
`The statutory provision on a settlement relating to inter partes reviews
`
`provides that an inter partes review “shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner, unless the
`
`Office has decided the merits of the proceeding before the request for termination
`
`is filed.” 35 U.S.C. § 317.
`
`
`
`This proceeding is in its early stages. This inter partes review was recently
`
`instituted on April 25, 2018. Pap. 7. No discovery has yet been requested or
`
`scheduled. The parties have settled their dispute and have agreed to file a
`
`stipulated dismissal in the district court litigation in which U.S. Patent No.
`
`7,915,631 had been asserted (Case No. 5:16-cv-00142 (W.D.N.C.).1
`
`
`1 Patent Owner notes that an IPR petition filed by a different petitioner, VIZIO,
`
`Inc., challenging claims of the ’631 patent is still pending at this time. See VIZIO,
`
`Inc. v. Nichia Corporaion, IPR2018-01100. However, by email correspondence to
`
`the Board dated June 12, 2018, Patent Owner and VIZIO jointly requested
`
`authorization to file a joint motion to terminate IPR2018-01100 in its entirety.
`
`
`
`
`
`Case IPR2018-00066
`Patent No. 7,915,631
`
`
`As noted above, the parties’ settlement agreement has been made in writing,
`
`and a true and correct copy shall be filed with this Office as business confidential
`
`information pursuant to 35 U.S.C. § 317(b).
`
`
`
`Because the Board has not decided the merits of this inter partes review
`
`proceeding, Section 317 provides that the proceeding should be terminated with
`
`respect to Petitioners. Moreover, because Lowe’s Companies, Inc., Lowe’s Home
`
`Centers, LLC, and L G Sourcing, Inc. are the only petitioners in the proceeding,
`
`once the proceeding is terminated with respect to them, no petitioner will remain in
`
`the inter partes review, and the Office may terminate the review in its entirety
`
`under Section 317. Patent Owner and Petitioners jointly submit that the Board
`
`should do so.
`
`Because these proceedings were only recently instituted, termination would
`
`save significant expenditure of resources by the Board and would further the
`
`purpose of IPR proceedings to provide an efficient and less costly alternative
`
`forum for patent disputes (including by encouraging settlement). The Board has
`
`routinely terminated proceedings at the request of settling parties in cases that have
`
`progressed much further than the present proceeding, see, e.g., Apex Medical Corp.
`
`v. Resmed Ltd., IPR2013-00512, Pap. 39, at 24 (Sept. 12, 2014) (granting motion
`
`to terminate in its entirety notwithstanding that instituted proceeding was fully
`
`briefed); Volusion, Inc. v. Versata Software, Inc., CBM2013-00018, Pap. 52, at 2
`
`
`
`
`
`Case IPR2018-00066
`Patent No. 7,915,631
`
`(June 17, 2014) (granting motion to terminate instituted proceeding in its entirety
`
`after final oral hearing); see also ARM, Ltd. v. Godo Kaisha IP Bridge 1, IPR2017-
`
`00527, Pap. 10, at 2-3 (May 12, 2017) (granting motion to terminate in its entirety
`
`after preliminary response but prior to institution). The parties respectfully request
`
`that the Board terminate this inter partes review proceeding in its entirety. Indeed,
`
`the Board has stated an expectation that proceedings such as this one will be
`
`terminated after the filing of a settlement agreement: “[t]here are strong public
`
`policy reasons to favor settlement between the parties to a proceeding . . . . The
`
`Board expects that a proceeding will terminate after the filing of a settlement
`
`agreement, unless the Board has already decided the merits of the proceeding. 35
`
`U.S.C. § 317(a), as amended. . . .” Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012) (emphasis added). For at least the reasons
`
`noted above, the Board’s expectation that such proceedings should be terminated is
`
`proper and well justified here.
`
`III. CONCLUSION
`
`
`
`Wherefore, Patent Owner and Petitioners respectfully request that the Board
`
`grant the parties’ joint motion to terminate Case No. IPR2018-00066 in its entirety
`
`and grant the request to treat the settlement agreement between the parties as
`
`business confidential information.
`
`
`
`
`
`Case IPR2018-00066
`Patent No. 7,915,631
`
`
`Petitioners and Patent Owner are available at the Board’s convenience to
`
`discuss these related matters in more detail or answer any additional questions
`
`raised by this joint motion.
`
`
`
`Dated: June 16, 2018
`
`Respectfully submitted,
`
`
`
`
`
`/s/ Scott D. Stimpson
`Scott D. Stimpson (Reg. No. 33,607)
`SILLS CUMMIS & GROSS PC
`101 Park Avenue, 28th Floor
`New York, NY 10178
`(212) 500-1550
`sstimpson@sillscummis.com
`
`
`Counsel for Petitioners Lowe’s
`Companies, Inc., Lowe’s Home
`Centers, LLC, and L G Sourcing, Inc.
`
`/s/ David E. Cole
`David E. Cole (Reg. No. 73,084)
`PAUL, WEISS, RIFKIND, WHARTON
`& GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006
`(202) 223-7300
`dcole@paulweiss.com
`
`Counsel for Patent Owner
`Nichia Corporation
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-00066
`Patent No. 7,915,631
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §42.6(e), I certify that, on June 16, 2018, I caused true
`
`and correct copies of the foregoing JOINT MOTION TO TERMINATE
`
`PROCEEDINGS PURSUANT TO 35 U.S.C. § 317 to be served by email on
`
`the following counsel of record for Petitioners Lowe’s Companies, Inc., Lowe’s
`
`Home Centers, LLC, and L G Sourcing, Inc.:
`
`Scott D. Stimpson, Esq.
`SILLS CUMMIS & GROSS PC
`101 Park Avenue, 28th Floor
`New York, NY 10178
` sstimpson@sillscummis.com
`
`B. Todd Patterson, Esq.
`PATTERSON + SHERIDAN, LLP
`24 Greenway Plaza, Suite 1600
`Houston, TX 77046
`tpatterson@pattersonsheridan.com
`
`
`
`
`
`
`
`
`/s/ David E. Cole
`David E. Cole (Reg. No. 73,084)
`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006-1047
`(202) 223-7300
`dcole@paulweiss.com
`
`Counsel for Patent Owner
`Nichia Corporation
`
`
`
`
`
`
`
`
`
`
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
