Trials@uspto.gov
`571-272-7822
`
` Paper 46
` Entered: June 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`
`
`
`
`IPR2018-00386 (Patent 9,490,411 B2)
` IPR2018-00437 (Patent 9,537,071 B2)1
`______________
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Renewed Joint Motion to Terminate the Proceeding Due to
`Settlement after Institution Decision and
`Granting Joint Request to File Termination Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`1 Because this Decision addresses issues common to both of the above-
`captioned proceedings, we issue one Decision to be entered in each
`proceeding. The parties are not authorized to use this style of caption.
`
`
`571-272-7822
`
` Paper 46
` Entered: June 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`
`
`
`
`IPR2018-00386 (Patent 9,490,411 B2)
` IPR2018-00437 (Patent 9,537,071 B2)1
`______________
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Renewed Joint Motion to Terminate the Proceeding Due to
`Settlement after Institution Decision and
`Granting Joint Request to File Termination Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`1 Because this Decision addresses issues common to both of the above-
`captioned proceedings, we issue one Decision to be entered in each
`proceeding. The parties are not authorized to use this style of caption.
`
`
`
`IPR2018-00386 (Patent 9,490,411 B2)
`IPR2018-00437 (Patent 9,537,071 B2)
`I.
`INTRODUCTION
`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 392) and included a copy of the parties’ Binding Term Sheet
`(Exhibit 2029). Among other things, the Binding Term Sheet provides that
`the parties were working in good faith to prepare a “final agreement.” 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
`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.
`On May 15, 2019, the Board issued an Order dismissing without
`prejudice the parties’ Joint Motion to Terminate. Paper 42. The Order
`
`
`2 Paper numbers and exhibit numbers in this Order refer to those filed in
`IPR2018-00386.
`
`2
`
`
`
`IPR2018-00386 (Patent 9,490,411 B2)
`IPR2018-00437 (Patent 9,537,071 B2)
`explains that, because the parties were in on-going negotiations regarding a
`final settlement agreement, the Joint Motion to Terminate and Binding Term
`Sheet did not satisfy the requirements of 35 U.S.C. § 317(b). Paper 42, 2–3.
`The Order authorized the parties to renew their joint motion at such time that
`the parties could certify the requirements of § 317(b) had been satisfied.
`On May 29, 2019, the parties filed a Renewed Joint Motion to
`Terminate the Proceeding. Paper 45. For the reasons explained below, we
`GRANT the parties’ Renewed Joint Motion to Terminate the Proceeding and
`the parties’ Joint Request to File Termination Agreement as Business
`Confidential Information (Paper 40 (“Joint Request”)).
`II. ANALYSIS
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” Under
`§ 317(b),
`
`[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).
`Although Decisions to Institute were entered in each of the above-
`captioned proceedings (Paper 15), we have not entered Final Written
`Decisions on the merits. The parties’ Renewed Joint Motion to Terminate
`
`3
`
`
`
`IPR2018-00386 (Patent 9,490,411 B2)
`IPR2018-00437 (Patent 9,537,071 B2)
`identifies the parties’ Binding Term Sheet as the only agreement between the
`parties made in connection with or in contemplation of the termination of
`these proceedings.
`Unlike the circumstances of the parties’ original Joint Motion to
`Terminate, the parties filed the Renewed Joint Motion to Terminate after
`expiration of the Binding Term Sheet’s time period for on-going
`negotiations toward a final settlement agreement. Exhibit 2029, 2. In
`addition, the Renewed Joint Motion to Terminate includes the parties’
`certification that filing the Binding Term Sheet satisfies the requirements of
`§ 317(b), including the requirement for filing all agreements and
`understandings made in connection with termination of these proceedings.
`Id.
`
`Under these circumstances, we determine that good cause exists to
`terminate the proceedings with respect to the parties. Indeed, there are
`strong public policy reasons to favor settlement between the parties to a
`proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,768 (Aug. 14, 2012). When, as here, we have not entered Final Written
`Decisions on the merits, we generally expect that trials will terminate after the
`filing of settlement agreements. See id. Accordingly, we determine that it is
`appropriate to terminate the above-captioned proceedings without entering
`final written decisions. See 37 C.F.R. § 42.72.
`The parties also filed a Joint Request to File Termination Agreement
`as Business Confidential Information in each of the above-captioned
`proceedings. Joint Request. The parties request that the Agreements be
`treated as business confidential information and that the Agreements be kept
`separate from the file of the patents involved in the above-captioned
`
`4
`
`
`
`IPR2018-00386 (Patent 9,490,411 B2)
`IPR2018-00437 (Patent 9,537,071 B2)
`proceedings and not be made available to any third party, except as provided
`for in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Id. at 2.
`A party to a settlement may request that the settlement be
`treated as business confidential information and be kept
`separate from the files of an involved patent or application. The
`request must be filed with the settlement. If a timely request is
`filed, the settlement shall only be available: (1) To a
`Government agency on written request to the Board; or (2) To
`any other person upon written request to the Board to make the
`settlement agreement available, along with the fee specified in §
`42.15(d) and on a showing of good cause.
`
`
`37 C.F.R. § 42.74(c).
`After reviewing the Agreements between the parties, we find that the
`Agreements contain confidential business information regarding the terms of
`settlement. We determine that it is appropriate to treat the Agreements as
`business confidential information pursuant to 37 C.F.R. § 42.74(c).
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Renewed Joint Motion to Terminate in each of
`the above-captioned proceedings is granted, and IPR2018-00386 and
`IPR2018-00437 are terminated; and
`FURTHER ORDERED that the Joint Request to treat the Agreement
`in each of the above-captioned proceedings as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted.
`
`
`
`
`
`5
`
`
`
`IPR2018-00386 (Patent 9,490,411 B2)
`IPR2018-00437 (Patent 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
`
`
`
`
`
`
`6
`
`
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