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` Paper ____
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` Date filed: May 29, 2019
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`Filed on behalf of: Nichia Corp.
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`By: Martin M. Zoltick, Lead Counsel
`
`Robert P. Parker, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel
`Michael H. Jones, Back-up Counsel
`
`Mark T. Rawls, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: mzoltick@rfem.com
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` rparker@rfem.com
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` ddahlgren@rfem.com
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` mjones@rfem.com
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` mrawls@rfem.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00437
`Patent 9,537,071 B2
`_______________
`
`PETITIONER VIZIO, INC. AND PATENT OWNER NICHIA
`CORPORATION’S RENEWED JOINT MOTION TO TERMINATE THE
`PROCEEDING PURSUANT TO 35 U.S.C. § 317
`
`
`
`Case IPR2018-00437
`Patent 9,537,071 B2
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner VIZIO, Inc. (“VIZIO”) and Patent
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`Owner Nichia Corporation (“Nichia”) jointly renew their request for termination of
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`the inter partes review of U.S. Patent No. 9,537,071 in case IPR2018-00437. The
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`Board authorized the filing of this renewed motion in the Order entered on May 15,
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`2019 (Paper 54).
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`The Board has not issued a Final Written Decision deciding the merits of
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`this proceeding. The parties have entered into a Binding Term Sheet in which the
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`parties have agreed to cooperate to seek dismissal of this proceeding. This
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`agreement has been made in writing, and a true and correct copy was previously
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`filed with the Board as business confidential information pursuant to 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(c) as Exhibit 2038.
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` In accordance with the Board’s May 15, 2019 Order (Paper 54), the parties
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`certify (i) that all agreements or understandings, including any collateral
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`agreements, including but not limited to licenses, covenants not to sue,
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`confidentiality agreements, payment arrangements, or other agreements of any
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`kind, between the parties that are made in connection with termination of this
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`proceeding have been filed and (ii) that no other written or oral agreements or
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`2
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`
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`Case IPR2018-00437
`Patent 9,537,071 B2
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`understandings, including any collateral agreements, are made in connection with,
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`or in contemplation of, the termination of these proceedings.
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`Accordingly, VIZIO and Nichia respectfully request termination of the inter
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`partes reviews of U.S. Patent No. 9,537,071 in the case IPR2018-00437.
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`Dated: May 29, 2019
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`
`
`
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` Respectfully submitted,
`
` /
`
`
`
`
`
` Martin M. Zoltick /
`Martin M. Zoltick, Reg. No. 35,745
`ROTHWELL, FIGG, ERNST &
`MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Email: mzoltick@rfem.com
`
`Counsel for Patent Owner
`Nichia Corporation
`
` /
`
`
`
`
` Gabrielle E. Higgins /
`Gabrielle E. Higgins, Reg. No. 38,916
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: 650-617-4015
`Facsimile: 617-235-9492
`Email: gabrielle.higgins@ropesgray.com
`
`Counsel for Petitioner
`Vizio, Inc.
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`3
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`
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`Case IPR2018-00437
`Patent 9,537,071 B2
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 29th day of May, 2019, a true and correct copy
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`of the foregoing PETITIONER VIZIO, INC. AND PATENT OWNER
`
`NICHIA CORPORATION’S RENEWED JOINT MOTION TO
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`TERMINATE THE PROCEEDING PURSUANT TO 35 U.S.C. § 317 was
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`served, via electronic mail, upon the following counsel of record for Petitioner
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`Vizio, Inc.:
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`Gabrielle E. Higgins
`James L. Davis, Jr.
`Christopher M. Bonny
`James F. Mack
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: 650-617-4000 | Facsimile: 650-566-4090
`Emails: Gabrielle.Higgins@ropesgray.com
`James.L.Davis@ropesgray.com
`Christopher.Bonny@ropesgray.com
`James.Mack@ropesgray.com
`VIZIO2NichiaIPRs@ropesgray.com
`
`Scott McKeown
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, N.W.
`Washington, DC 20006-6807
`Phone: 202-508-4740 | Facsimile: 617-235-9492
`Email: Scott.McKeown@ropesgray.com
`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
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`4
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