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` Case No. IPR2018-01100
`Patent 7,915,631
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`VIZIO, INC.,
`Petitioner,
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`v.
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` NICHIA CORPORATION,
`Patent Owner.
`____________
`
`Case No. IPR2018-01100
`Patent 7,915,631
`____________
`
`JOINT MOTION TO DISMISS PROCEEDINGS
`UNDER 37 C.F.R. §§ 42.71(a) and 42.74
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` Case No. IPR2018-01100
`Patent 7,915,631
`Pursuant to 37 C.F.R. §§ 42.71(a) and 42.74, Petitioner VIZIO, Inc.
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`(“VIZIO”) and Patent Owner Nichia Corporation (“Nichia”) respectfully request
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`dismissal of IPR2018-01100 in its entirety.
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`The Board authorized this Motion by order dated June 26, 2018. Pap. 8.
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`BASIS FOR DISMISSAL
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`On May 29, 2018, a federal district court issued a claim construction order
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`that held that a claim term in claim 1, the sole independent claim, of the ’631
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`patent is indefinite. In view of that development, Petitioner believes that the
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`dismissal of these proceedings would conserve both the Board’s and the parties’
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`resources. Patent Owner agrees to dismiss these proceedings, and that doing so
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`would conserve resources, but reserves all rights with respect to that claim
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`construction order.
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`Petitioner and Patent Owner certify that there are no collateral agreements or
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`understandings made in connection with, or in contemplation of, the parties’ joint
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`request to dismiss the proceeding.
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`Dismissal is appropriate here. This proceeding is in the preliminary stage.
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`This inter partes review has not been instituted. Petitioner filed its petition for
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`inter partes review on May 24, 2018, and, although Petitioner has requested the
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`Board accelerate the deadline for Patent Owner’s preliminary response, the Board
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`has not granted that request and Patent Owner’s preliminary response is currently
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`2
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` Case No. IPR2018-01100
`Patent 7,915,631
`not due until August 23, 2018. Accordingly, dismissal would promote efficiency
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`and minimize unnecessary costs to the parties and to the Board. Because the Board
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`has not decided the merits of this inter partes review proceeding, and due to the
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`early stage of the proceeding, Patent Owner and Petitioner jointly submit that the
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`Board should dismiss this proceeding in its entirety. See, e.g., Samsung Elec. Co.
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`LTD v. NVIDIA Corp., IPR2015-01270, Pap. 12 at 3-4 (Dec. 9, 2015) (exercising
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`discretion to dismiss the petition at an “early juncture, to promote efficiency and
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`minimize unnecessary costs”).
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`STATUS OF RELATED DISTRICT COURT ACTIONS
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`Nichia/VIZIO Litigation. As discussed above, on May 29, 2018, in a
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`litigation between the parties here, a federal district court issued a claim
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`construction order finding indefinite a claim term recited in the sole independent
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`claim of the ’631 patent. Nichia Corp. v. VIZIO, Inc., No. 8-16-cv-00545, Dkt.
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`127 at 25-29 (C.D. Cal. May 29, 2018). That litigation—which involves other
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`asserted patents—is ongoing.
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`Nichia/Lowe’s Litigation. The other litigation involving the ’631 patent
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`that was identified by Patent Owner in its mandatory disclosures—Nichia
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`Corporation v. Lowe’s Companies, Inc., Lowe’s Home Centers, LLC, and L G
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`Sourcing, Inc., Case No. 5:16-cv-00142 (W.D.N.C.)—has since settled and, on
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`June 18, 2018, the parties filed a stipulation of dismissal.
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`3
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` Case No. IPR2018-01100
`Patent 7,915,631
`Other Litigations. As discussed in Patent Owner’s Mandatory Disclosures,
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`all other judicial proceedings involving the ’631 patent have been voluntarily
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`dismissed after settlements. Pap. 6, at 2-3.
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`STATUS OF RELATED INTER PARTES REVIEW PROCEEDINGS
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`Lowe’s IPR. On October 12, 2017, Lowe’s Companies, Inc. et al. filed a
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`petition challenging claims 1-2 and 6-11 of the ’631 patent, and the Board granted
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`institution on April 25, 2018. IPR2018-00066, Paps. 1 and 7. On June 16, 2018,
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`Patent Owner and the petitioners in that proceeding filed a joint motion to
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`terminate IPR2018-00066 in its entirety. IPR2018-00066, Pap. 10. That motion is
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`still pending.
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`Other IPRs. As discussed in Patent Owner’s Mandatory Disclosures, all
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`other IPR proceedings involving the ’631 patent were denied institution or were
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`terminated following a settlement. Pap. 6, at 1 (citing IPR2017-00551 and
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`IPR2017-2000).
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`* * * *
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`The parties advise the Board that no other litigation or IPR proceeding
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`involving the ʼ631 patent is contemplated in the foreseeable future. The parties
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`further advise the Board that the ’631 patent has expired.
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` Case No. IPR2018-01100
`Patent 7,915,631
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`CONCLUSION
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`Wherefore, Patent Owner and Petitioner respectfully request that the Board
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`grant the parties’ Joint Motion to Dismiss Case Number IPR2018-01100 in its
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`entirety. Petitioner 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: June 29, 2018
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`Dated: June 29, 2018
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`Respectfully submitted
`ROPES & GRAY LLP
`By: /Gabrielle E. Higgins/
`
`Gabrielle E. Higgins
`Reg. No. 38,916
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`Phone: +1-650-617-4015
`Fax: +1-617-235-9492
`gabrielle.higgins@ropesgray.com
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`Attorneys for Petitioner
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`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`By: /s/ David E. Cole
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`David E. Cole
`Reg. No. 73,084
`2001 K Street, NW
`Washington, DC 20006-1047
`Phone: +1-202-223-7300
`Fax: +1-202-223-7420
`dcole@paulweiss.com
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`Attorneys for Patent Owner
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`5
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` Case No. IPR2018-01100
`Patent 7,915,631
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing JOINT MOTION TO DISMISS
`PROCEEDINGS UNDER UNDER 37 C.F.R. §§ 42.71(a) and 42.74 was served by
`filing this document through the Patent Trial and Appeal Board End to End (PTAB
`E2E) as well as providing a courtesy copy via electronic mail to the following
`attorneys of record for the Patent Owner listed below:
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`Catherine Nyarady (Reg. No. 42,042)
`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`1285 Avenue of the Americas
`New York, NY 10019
`Phone: +1-212-373-3000
`Fax: +1-212-757-3990
`cnyarady@paulweiss.com
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`David E. Cole (Reg. No. 73,084)
`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`2001 K Street, NW
`Washington, D.C. 20006-1047
`Phone: +1-202-223-7300
`Phone: +1-202-223-7420
`dcole@paulweiss.com
`
`
`Dated: June 29, 2018
`
`
`By: /Crena Pacheco/
`Name: Crena Pacheco
`ROPES & GRAY LLP
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`
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`6
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