`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`LOWE’S COMPANIES, INC.,
`LOWE’S HOME CENTERS, LLC, and L G SOURCING, INC.,
`Petitioners,
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`v.
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`NICHIA CORPORATION,
`Patent Owner.
`_______________
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`Case IPR2018-00066
`Patent No. 7,915,631
`_______________
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`CORRECTED JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`Case IPR2018-00066
`Patent No. 7,915,631 B2
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Patent Owner
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`Nichia Corporation (“Patent Owner”) and Petitioners Lowe’s Companies, Inc.,
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`Lowe’s Home Centers, LLC, and L G Sourcing, Inc. (“Petitioners”) jointly move
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`the Patent Trial and Appeal Board (“Board”) to terminate the following inter
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`partes review proceeding in its entirety:
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`IPR Case No.
`IPR2018-00066
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`Patent No.
`7,915,631
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`On May 15, 2018, the parties notified the Board by email that they had
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`agreed in principle to a settlement that would affect this IPR proceeding and were
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`negotiating a definitive settlement agreement.
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`On June 13, 2018, the parties notified the Board by email that the parties had
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`reached a final settlement and requested authorization to file the present motion.
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`On June 15, 2018, the Board authorized the parties to do so. Pap.9. By email
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`dated July 11, 2018, the Board advised the parties to file a corrected motion that
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`contained a statement certifying that there are no such collateral agreements or
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`understandings made in connection with, or in contemplation of, the termination of
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`these proceedings.
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`In support of the Motion to Terminate Proceeding, the parties state as
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`follows:
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`Case IPR2018-00066
`Patent No. 7,915,631
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), Petitioners and
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`Patent Owner jointly file herewith a true copy of their confidential settlement
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`agreement. Because the settlement agreement is confidential, the parties
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`respectfully request that it be treated as business confidential information, kept
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`separate from the underlying patent file, and made available only as provided in 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties have filed herewith a
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`separate paper setting forth this request.
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`The statutory provision on a settlement relating to inter partes reviews
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`provides that an inter partes review “shall be terminated with respect to any
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`petitioner upon the joint request of the petitioner and the patent owner, unless the
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`Office has decided the merits of the proceeding before the request for termination
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`is filed.” 35 U.S.C. § 317.
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`This proceeding is in its early stages. This inter partes review was recently
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`instituted on April 25, 2018. Pap. 7. No discovery has yet been requested or
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`scheduled. The parties have settled their dispute and have agreed to file a
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`stipulated dismissal in the district court litigation in which U.S. Patent No.
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`7,915,631 had been asserted (Case No. 5:16-cv-00142 (W.D.N.C.).1
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`1 Patent Owner notes that an IPR petition filed by a different petitioner, VIZIO,
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`Inc., challenging claims of the ’631 patent is still pending at this time. See VIZIO,
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`Case IPR2018-00066
`Patent No. 7,915,631
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`As noted above, the parties’ settlement agreement has been made in writing,
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`and a true and correct copy shall be filed with this Office as business confidential
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`information pursuant to 35 U.S.C. § 317(b).
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`Because the Board has not decided the merits of this inter partes review
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`proceeding, Section 317 provides that the proceeding should be terminated with
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`respect to Petitioners. Moreover, because Lowe’s Companies, Inc., Lowe’s Home
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`Centers, LLC, and L G Sourcing, Inc. are the only petitioners in the proceeding,
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`once the proceeding is terminated with respect to them, no petitioner will remain in
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`the inter partes review, and the Office may terminate the review in its entirety
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`under Section 317. Patent Owner and Petitioners jointly submit that the Board
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`should do so.
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`Because these proceedings were only recently instituted, termination would
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`save significant expenditure of resources by the Board and would further the
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`purpose of IPR proceedings to provide an efficient and less costly alternative
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`forum for patent disputes (including by encouraging settlement). The Board has
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`routinely terminated proceedings at the request of settling parties in cases that have
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`Inc. v. Nichia Corporaion, IPR2018-01100. However, by email correspondence to
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`the Board dated June 12, 2018, Patent Owner and VIZIO jointly requested
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`authorization to file a joint motion to terminate IPR2018-01100 in its entirety.
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`Case IPR2018-00066
`Patent No. 7,915,631
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`progressed much further than the present proceeding, see, e.g., Apex Medical Corp.
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`v. Resmed Ltd., IPR2013-00512, Pap. 39, at 24 (Sept. 12, 2014) (granting motion
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`to terminate in its entirety notwithstanding that instituted proceeding was fully
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`briefed); Volusion, Inc. v. Versata Software, Inc., CBM2013-00018, Pap. 52, at 2
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`(June 17, 2014) (granting motion to terminate instituted proceeding in its entirety
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`after final oral hearing); see also ARM, Ltd. v. Godo Kaisha IP Bridge 1, IPR2017-
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`00527, Pap. 10, at 2-3 (May 12, 2017) (granting motion to terminate in its entirety
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`after preliminary response but prior to institution). The parties respectfully request
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`that the Board terminate this inter partes review proceeding in its entirety. Indeed,
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`the Board has stated an expectation that proceedings such as this one will be
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`terminated after the filing of a settlement agreement: “[t]here are strong public
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`policy reasons to favor settlement between the parties to a proceeding . . . . The
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`Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding. 35
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`U.S.C. § 317(a), as amended. . . .” Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48768 (Aug. 14, 2012) (emphasis added). For at least the reasons
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`noted above, the Board’s expectation that such proceedings should be terminated is
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`proper and well justified here.
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`Case IPR2018-00066
`Patent No. 7,915,631
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`CERTIFICATION REGARDING COLLATERAL AGREEMENTS
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`The parties hereby certify that there are no collateral agreements to the
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`confidential settlement agreement (EX2020) or understandings made in connection
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`with, or in contemplation of, the termination of these proceedings.
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`CONCLUSION
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`Wherefore, Patent Owner and Petitioners respectfully request that the Board
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`grant the parties’ joint motion to terminate Case No. IPR2018-00066 in its entirety
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`and grant the request to treat the settlement agreement between the parties as
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`business confidential information.
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`Petitioners and Patent Owner are available at the Board’s convenience to
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`discuss these related matters in more detail or answer any additional questions
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`raised by this joint motion.
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`Dated: July 12, 2018
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`Respectfully submitted,
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`/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
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`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
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`Counsel for Patent Owner
`Nichia Corporation
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`Case IPR2018-00066
`Patent No. 7,915,631
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §42.6(e), I certify that, on July 12, 2018, I caused true
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`and correct copies of the foregoing JOINT MOTION TO TERMINATE
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`PROCEEDINGS PURSUANT TO 35 U.S.C. § 317 to be served by email on
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`the following counsel of record for Petitioners Lowe’s Companies, Inc., Lowe’s
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`Home Centers, LLC, and L G Sourcing, Inc.:
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`Scott D. Stimpson, Esq.
`SILLS CUMMIS & GROSS PC
`101 Park Avenue, 28th Floor
`New York, NY 10178
` sstimpson@sillscummis.com
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`B. Todd Patterson, Esq.
`PATTERSON + SHERIDAN, LLP
`24 Greenway Plaza, Suite 1600
`Houston, TX 77046
`tpatterson@pattersonsheridan.com
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`/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
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`Counsel for Patent Owner
`Nichia Corporation
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