`571.272.7822
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`Paper No. 17
` Entered: May 6, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SHENZHEN HUIDING TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`SYNAPTICS INCORPORATED,
`Patent Owner.
`_______________
`
`Case IPR2015-01739
`Patent 8,558,811 B2
`_______________
`
`
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Termination of Trial and Settlement
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
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`IPR2015-01739
`Patent 8,558,811 B2
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`In an Order dated April 4, 2016 (Paper 14), we authorized Patent
`Owner Synaptics Incorporated and Petitioner Shenzhen Huiding Technology
`Co., Ltd. (collectively, “the Parties”) to file a joint motion to terminate the
`instant proceeding with true copies of all their agreements in contemplation
`of termination and a joint motion to treat the filed copies of agreement as
`business confidential information under 37 C.F.R. § 42.74(c). Paper 14, 2.
`On April 7, 2016, the parties filed a Joint Motion to Terminate Proceedings
`Under 35 U.S.C. § 317 (Paper 15), a copy of a written Settlement Agreement
`(Ex. 1018), and a Joint Request to Treat Settlement Agreement as Business
`Confidential Information Pursuant to 35 U.S.C. § 317 (Paper 16).
`The Parties indicate that they have settled their underlying dispute and
`have agreed, in the Settlement Agreement, a true and correct copy of which
`they have filed with their motion, to terminate this proceeding. Paper 15, 1–
`2. The Parties further indicate that a related district court litigation,
`captioned Synaptics Inc. v. Goodix Technology Inc. et al., Civil Action
`No. 3:15-cv-01742, was dismissed by the U.S. District Court for the
`Northern District of California on March 30, 2016; that the Parties filed a
`Joint Motion for Termination of Investigation Based on Settlement in a
`related U.S. International Trade Commission investigation, captioned In the
`Matter of Certain Touchscreen Controllers and Products Containing the
`Same, Inv. No. 337-TA-957 on March 29, 2016; that no other proceedings
`concerning the subject patent are contemplated by the Parties in the
`foreseeable future; that the Settlement Agreement was duly executed by the
`Parties on March 26, 2016; that the Settlement Agreement is the entire and
`complete settlement agreement between the Parties; and that, beyond the
`Settlement Agreement, there are no other written or oral agreements or
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`IPR2015-01739
`Patent 8,558,811 B2
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`understandings, including any collateral agreements, between the Parties,
`including but not limited to other licenses, covenants not to sue,
`confidentiality agreements, or other agreements of any kind, that are made in
`connection with or in contemplation of the termination of this proceeding.
`Id.
`
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Although trial has
`been instituted, we have not decided the merits of the proceeding.
`See 35 U.S.C. § 317(a) (“An inter partes review instituted under this chapter
`shall be terminated with respect to any petitioner upon the joint request of
`the petitioner and the patent owner, unless the Office has decided the merits
`of the proceeding before the request for termination is filed.”); 37 C.F.R.
`§ 42.72 (“The Board may terminate a trial without rendering a final written
`decision, where appropriate . . . .”). We are persuaded that, under these
`circumstances, termination of this proceeding is appropriate.
`This paper does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is
`ORDERED that the Parties’ Joint Motion to Terminate Proceedings
`Under 35 U.S.C. § 317 (Paper 14) is granted;
`FURTHER ORDERED that the Parties’ Joint Request to Treat
`Settlement Agreement as Business Confidential Information Pursuant to
`35 U.S.C. § 317 (Paper 15) is granted;
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`IPR2015-01739
`Patent 8,558,811 B2
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`FURTHER ORDERED that the Settlement Agreement (Exhibit 1018)
`shall be kept separate from the file of the above-referenced patent, pursuant
`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that this trial is terminated.
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`IPR2015-01739
`Patent 8,558,811 B2
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`For PETITIONER:
`
`Bing Ai
`John P. Schnurer
`Kevin J. Patariu
`James Coughlan
`PERKINS COIE LLP
`goodix-synaptics-IPR-service@perkinscoie.com
`ai-ptab@perkinscoie.com
`jschnurer@perkinscoie.com
`kpatariu@perkinscoie.com
`jcoughlan@perkinscoie.com
`
`For PATENT OWNER:
`
`Robert P. Lord
`Tammy J. Terry
`Peter C. Schechter
`Jeffery P. Langer
`OSHA LIANG LLP
`lord@oshaliang.com
`terry@oshaliang.com
`schechter@oshaliang.com
`langer@oshaliang.com
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