IPR2020-01456 (P.T.A.B. Dec. 1, 2020)

The Regents of the University of California

Patent Trials and Appeals BoardDec 1, 2020

IPR2020-01456 (P.T.A.B. Dec. 1, 2020)

Trials@uspto.gov Paper 9 Tel: 571-272-7822 Date: December 1, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GENERAL ELECTRIC COMPANY and CONSUMER LIGHTING (U.S.), LLC (d/b/a GE LIGHTING), Petitioner, v. THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, Patent Owner. ____________ IPR2020-01456 (Patent 7,781,789 B2) IPR2020-01457 (Patent 9,240,529 B2) IPR2020-01458 (Patent 9,859,464 B2) IPR2020-01459 (Patent 10,217,916 B2) ____________ Before JENNIFER S. BISK, CHRISTOPHER L. CRUMBLEY, and STEVEN M. AMUNDSON, Administrative Patent Judges. CRUMBLEY, Administrative Patent Judge DECISION Dismissal Prior to Institution of Trial 35 U.S.C. § 314 IPR2020-01456 (Patent 7,781,789 B2) IPR2020-01457 (Patent 9,240,529 B2) IPR2020-01458 (Patent 9,859,464 B2) IPR2020-01459 (Patent 10,217,916 B2) 2 General Electric Company and Consumer Lighting (U.S.), LLC (d/b/a GE Lighting) (collectively, “GE”) filed four Petitions requesting inter partes reviews of various claims of patents owned by the Regents of the University of California (“Regents”). Paper 3.1 GE subsequently contacted the Board via e-mail, requesting authorization to file unopposed motions to dismiss the four proceedings. We granted the requested authorization, and GE filed an Unopposed Motion to Dismiss Petition in each of the proceedings. Paper 8 (“Mot.”). In the Motion, GE explains that, after it filed the Petitions, Regents named GE as Respondent in a complaint to the International Trade Commission alleging infringement of five patents, including U.S. Patent Nos. 9,240,529 (IPR2020-01457) and 9,859,464 (IPR2020-01458). Mot. 2. Because substantially similar issues will be addressed in the Board proceedings and before the ITC, Petitioner wishes to dismiss the four Petitions pending before the Board, “to avoid overlapping ITC and PTAB proceedings addressing substantially the same issues.” Id. Regents does not oppose GE’s request. Id. These proceedings are at an early stage and we have not yet considered the merits of the Petitions, nor have we instituted any trial. In view of the early stage of these proceedings, we determine it is appropriate to dismiss the Petitions and terminate the proceedings to promote efficiency and minimize unnecessary costs. See 37 C.F.R. § 42.71(a). 1 For brevity, citations herein are to the record in IPR2020-01456. Corresponding papers may be found in the records of the related cases. IPR2020-01456 (Patent 7,781,789 B2) IPR2020-01457 (Patent 9,240,529 B2) IPR2020-01458 (Patent 9,859,464 B2) IPR2020-01459 (Patent 10,217,916 B2) 3 Accordingly, it is: ORDERED that the Unopposed Motions to Dismiss are granted; FURTHER ORDERED that the Petitions are dismissed; FURTHER ORDERED that these proceedings are terminated; and FURTHER ORDERED that this paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). IPR2020-01456 (Patent 7,781,789 B2) IPR2020-01457 (Patent 9,240,529 B2) IPR2020-01458 (Patent 9,859,464 B2) IPR2020-01459 (Patent 10,217,916 B2) 4 FOR PETITIONER: Joseph Sauer jmsauer@jonesday.com Matthew Johnson mwjohnson@jonesday.com David Cochran dcochran@jonesday.com Robert M. Breetz rbreetz@jonesday.com FOR PATENT OWNER: Peter Wied pwied@nixonpeabody.com Vincent Yip vyip@nixonpeabody.com Shawn Hansen shansen@nixonpeabody.com