Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 42
`Entered: May 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00386
`Patent No. 9,490,411 B2
`
`Case IPR2018-00437
`Patent No. 9,537,071 B2
`______________
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`
`
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`ORDER
`Conduct of the Proceeding
`Dismissing Joint Motion to Terminate Without Prejudice
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 42
`Entered: May 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00386
`Patent No. 9,490,411 B2
`
`Case IPR2018-00437
`Patent No. 9,537,071 B2
`______________
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`
`
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`ORDER
`Conduct of the Proceeding
`Dismissing Joint Motion to Terminate Without Prejudice
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`
`Oral arguments in these proceedings took place on March 5, 2019,
`and the statutory deadlines for final written decisions are June 26, 2019 for
`IPR2018-00386 and July 16, 2019 for IPR2018-00437. With an e-mail
`dated March 29, 2019, the parties notified the Board that the parties “have
`entered into a Binding Term Sheet . . . and are preparing the final settlement
`agreement,” and the parties jointly requested authorization to file a motion to
`terminate the proceedings.
`On April 1, 2019, the Board authorized the parties to file a joint
`motion to terminate and instructed the parties to file a copy of the settlement
`agreement as an exhibit to the joint motion. On April 12, 2019, the parties
`filed a Joint Motion to Terminate the Proceeding Pursuant to 35 U.S.C.
`§ 317 (Paper 391) and included a copy of the parties’ Binding Term Sheet
`(Exhibit 2029).
`The Joint Motion to Terminate provides that the parties “have entered
`into a Binding Term Sheet in which the parties have agreed to cooperate to
`seek dismissal of this proceeding.” Paper 39, 2. Among other things, the
`Binding Term Sheet provides that the parties desire to settle their disputes
`and avoid continued litigation. Ex. 2029, 1. The Binding Term Sheet also
`states that the parties will work in good faith to prepare a “final agreement”
`and that “[u]nless and until such a final agreement is executed, this Binding
`Term Sheet shall control.” Ex. 2029, 1–2.
`At the request of the Board, a telephone conference was held on May
`6, 2019 to discuss the status of the “final agreement” referenced in the
`
`
`1 Paper numbers and exhibit numbers in this Order refer to those filed in
`IPR2018-00386.
`
`2
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`Binding Term Sheet. During the telephone conference, the parties indicated
`that the parties’ district-court litigation has been dismissed with prejudice
`pursuant to the parties’ settlement, but the parties also indicated that the
`parties are in on-going negotiations for a final settlement agreement.
`In relevant part, 35 U.S.C. § 317(b) requires that “[a]ny 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 of an inter partes
`review under this section shall be in writing and a true copy of such
`agreement or understanding shall be filed in the Office before the
`termination of the inter partes review as between the parties.” 35 U.S.C.
`§ 317(b) (emphasis added). As noted above, the Binding Term Sheet
`expressly reflects the parties’ intention to negotiate and execute a “final
`agreement” in connection with termination of these proceedings. As
`§ 317(b) requires that the parties file any agreement or understanding,
`including any collateral agreements, before termination of the inter parties
`review, we determine it is premature to terminate these proceedings while
`the parties continue to negotiate a final agreement. In other words, under the
`current circumstances, the requirements of § 317(b) are not satisfied,
`notwithstanding the possibility the Binding Term Sheet may ultimately be
`the only agreement or understanding made in connection with termination of
`these proceedings (e.g., if the parties are unable to execute a “final
`agreement”).
`Accordingly, we dismiss the parties’ Joint Motion to Terminate
`without prejudice, with leave to file another joint motion to terminate. Any
`such motion to terminate shall explain why termination is appropriate and
`3
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`how the motion is in compliance with § 317(b). 37 C.F.R. § 42.20(c). We
`remind the parties that 37 CFR § 42.8 requires the parties to file updated
`mandatory notices within 21 days of a change of information listed in the
`parties’ mandatory notices (e.g., related matters).
`
`
`ORDER
`In view of the foregoing, it is hereby:
`ORDERED that the parties’ Joint Motion to Terminate is dismissed
`without prejudice, with leave to refile;
`ORDERED that, if the parties file a joint motion to terminate, the
`parties shall certify (i) that all agreements or understandings, including any
`collateral agreements, including but not limited to licenses, covenants not to
`sue, confidentiality agreements, payment arrangements, or other agreements
`of any kind, between the parties that are made in connection with
`termination of this proceeding have been filed and (ii) that no other written
`or oral agreements or understandings, including any collateral agreements,
`are made in connection with, or in contemplation of, the termination of these
`proceedings;
`ORDERED that, if the parties do not file a joint motion to terminate
`before June 3, 2019, the parties must arrange a conference call with the
`Board to discuss the status of this proceeding; and
`FURTHER ORDERED that the parties shall (either individually or
`jointly) file updated mandatory notices under 37 CFR §42.8 within five days
`of the date of this Order.
`
`
`
`
`
`4
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`PETITIONER:
`Gabrielle E. Higgins
`Kathryn N. Hong
`ROPES & GRAY LLP,
`gabrielle.higgins@ropesgray.com
`kathryn.hong@ropesgray.com
`
`PATENT OWNER:
`Martin M. Zoltick
`Michael H. Jones
`Mark T. Rawls
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`mzoltick@rfem.com
`mjones@rfem.com
`mrawls@rfem.com
`
`5
`
`
`
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