UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`OLYMPUS CORPORATION, OLYMPUS CORPORATION OF THE
`AMERICAS, and OLYMPUS AMERICA INC.,
`Petitioners,
`
`v.
`
`MAXELL LTD.,
`Patent Owner.
`_______________
`
`Case: IPR2018-00904
`
`U.S. Patent No. 8,339,493
`_______________
`
`PETITIONER’S AUTHORIZED UNOPPOSED MOTION TO DISMISS
`PROCEEDING WITH PREJUDICE
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`December 18, 2018
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`OLYMPUS CORPORATION, OLYMPUS CORPORATION OF THE
`AMERICAS, and OLYMPUS AMERICA INC.,
`Petitioners,
`
`v.
`
`MAXELL LTD.,
`Patent Owner.
`_______________
`
`Case: IPR2018-00904
`
`U.S. Patent No. 8,339,493
`_______________
`
`PETITIONER’S AUTHORIZED UNOPPOSED MOTION TO DISMISS
`PROCEEDING WITH PREJUDICE
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`December 18, 2018
`
`
`
`Patent No. 8,339,493
`Petitioner’s Motion to Dismiss
`
`I.
`
`INTRODUCTION
`Pursuant to the Board’s authorization via email on November 21, 2018 and
`
`conference call on November 30, 2018, Petitioners Olympus Corporation,
`
`Olympus Corporation of the Americas, and Olympus America Inc. (hereinafter
`
`“Petitioner”) file this motion to dismiss this proceeding with prejudice.1
`
`This proceeding is in its preliminary phase and is well-suited for dismissal.
`
`Patent Owner, Maxell, Ltd. (“Maxell”), has filed a Preliminary Response, but the
`
`Board has yet to reach the merits and issue a decision on institution. Petitioner
`
`respectfully requests that the Board dismiss IPR2018-00904 with prejudice to
`
`preserve the Board’s and parties’ resources and to achieve a just, speedy, and
`
`inexpensive resolution to this dispute. Patent Owner has indicated that it does not
`
`oppose this motion.
`
`II. BACKGROUND AND PROCEDURAL HISTORY
`This is one of several IPR proceedings involving patents in Maxell’s patent
`
`portfolio. This petition was filed on June 20, 2018. Patent Owner timely filed its
`
`Preliminary Response on November 9, 2018. The Petition is currently pending
`
`before the Board. The parties have resolved their dispute as to U.S. Patent No.
`
`
`1 Substantively identical motions are being filed in all pending proceedings
`between Olympus and Maxell: IPR2018-00904, IPR2018-00906, IPR2018-00908,
`IPR2018-00909, IPR2018-00910, and IPR2018-00911.
`
`
`
`Patent No. 8,339,493
`Petitioner’s Motion to Dismiss
`
`8,339,493, the patent challenged in the instant proceeding, as well as all other
`
`patents in IPR proceedings between Olympus and Maxell, as evidenced by the
`
`settlement agreement submitted herewith pursuant to 37 C.F.R. § 42.74(b).2
`
`III. ARGUMENT
`Good cause exists to dismiss Petitioner’s petition in IPR2018-00904.
`
`Dismissal would preserve the Board’s and the parties’ resources, and would
`
`expeditiously resolve Petitioner’s request, furthering
`
`the purpose of IPR
`
`challenges. 37 C.F.R. §42.1(b). This proceeding is in its preliminary stage as the
`
`Board has not yet reached the merits or issued a decision on institution. Patent
`
`Owner would not be prejudiced by dismissal—especially where Petitioner is
`
`requesting to dismiss the proceeding with prejudice.
`
`The Board “may terminate a trial without rendering a final written decision,
`
`where appropriate.” 37 C.F.R. §42.72. Further, the rules governing IPR
`
`proceedings “shall be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” Id. §42.1(b). In determining whether dismissal is
`
`
`2 Submitted concurrently herewith is a request by Petitioner and Patent Owner that
`the settlement agreement be treated as business confidential information, be kept
`separate from the file of the involved patent, and be made available only to Federal
`Government agencies on written request or to any person on a showing of good
`cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`Patent No. 8,339,493
`Petitioner’s Motion to Dismiss
`
`“appropriate,” the Board primarily examines the stage and nature of the
`
`proceedings. See, e.g., Samsung Elecs. Co. v. NVIDIA Corp., Case IPR2015-
`
`01270, Paper 12 at 3 (PTAB Dec. 9, 2015).
`
`Proceedings that are in their preliminary proceeding stages—i.e., before the
`
`Board issues an institution decision—are well-suited for dismissal. See id.
`
`(granting opposed motion to terminate proceeding during the preliminary
`
`proceeding stage of underlying IPR proceeding); HTC Corp. v. Patentmarks
`
`Commc’ns, LLC, Case IPR2014-00907, Paper 7 at 3 (PTAB Aug. 26, 2014)
`
`(granting unopposed motion to terminate noting that a “decision on the Petition . . .
`
`has not yet been rendered. Under these circumstances, we determine that it is
`
`appropriate . . . to terminate this proceed without rendering a final written
`
`decision.”). As acknowledged by the Board in its November 21, 2018 email and
`
`November 30, 2018 conference call, as this proceeding is in the preliminary phase
`
`dismissal would be proper.
`
`Dismissing this proceeding would further the purpose of inter partes review
`
`proceedings by justly and expeditiously resolving this dispute without subjecting
`
`the Board and the parties to unnecessary expense in taking the proceeding through
`
`trial. The parties will incur substantial expense in preparing and presenting expert
`
`declarants for depositions, submitting substantive briefs and motions, and
`
`presenting at an oral hearing. The Board will also likely have to expend a
`
`
`
`Patent No. 8,339,493
`Petitioner’s Motion to Dismiss
`
`significant amount of resources if it declines to dismiss the proceeding. As an
`
`example, the Board would likely be requested to address various procedural
`
`disputes, preside over an oral hearing, and draft a substantive decision on
`
`institution and a final written decision on the merits. These resources and
`
`obligations can be spared by dismissing the proceeding.
`
`As stated in 35 U.S.C. § 317(a) and 37 C.F.R. § 42.73(d), because Petitioner
`
`and Patent Owner jointly request this dismissal, no estoppel under 35 U.S.C. §
`
`315(e) shall attach to Petitioner.
`
`IV. CONCLUSION
`For all the reasons stated above, Petitioner respectfully requests that the
`
`Board dismiss the underlying Petition in IPR2018-00904 with prejudice.
`
`
`
`Dated: December 18, 2018
`
`
`
`
`PERKINS COIE LLP
`30 Rockefeller Plaza, 22nd Floor
`New York, NY 10112
`(212) 262-6900 (phone)
`(212) 977-1649 (fax)
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /Matthew J. Moffa/
`Lead Counsel
`William J. McCabe, Reg. No. 33,536
`
`Back-Up Counsel
`Matthew J. Moffa, Reg. No. 58,860
`
`Counsel for Petitioner
`
`
`
`
`Patent No. 8,339,493
`Petitioner’s Motion to Dismiss
`
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the attached AUTHORIZED UNOPPOSED MOTION
`
`TO DISMISS PROCEEDING WITH PREJUDICE was served as of the below date
`
`by electronic mail on the Patent Owner at the following correspondence address:
`
`Robert G. Pluta
`rpluta@mayerbrown.com
`Michael J. Word
`mword@mayerbrown.com
`Saqib J. Siddiqui
`ssiddiqui@mayerbrown.com
`Jamie B. Beaber
`jbeaber@mayerbrown.com
`
`
`
`
`
`
`Dated: December 18, 2018
`
`
`
`
`PERKINS COIE LLP
`30 Rockefeller Plaza, 22nd Floor
`New York, NY 10112
`(212) 262-6900 (phone)
`(212) 977-1649 (fax)
`
`
`
`
`
` /Matthew J. Moffa/
`Lead Counsel
`William J. McCabe, Reg. No. 33,536
`
`Back-Up Counsel
`Matthew J. Moffa, Reg. No. 58,860
`
`Counsel for Petitioner
`
`
`
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