`Tel: 571-272-7822
`
`Paper 10
`Entered: May 6, 2016
`
`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 IPR2016-00464
`Patent 8,558,811 B2
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Dismissal of the Petition
`35 U.S.C. § 317; 37 C.F.R. §§ 42.5(a), 42.71(a), 42.74(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00464
`Patent 8,558,811 B2
`
`In an Order dated April 4, 2016 (Paper 7), 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
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`business confidential information under 37 C.F.R. § 42.74(c). Paper 7, 2.
`
`On April 7, 2016, the parties filed a Joint Motion to Terminate Proceedings
`
`Under 35 U.S.C. § 317 (Paper 8), a copy of a written Settlement Agreement
`
`(Ex. 1016), and a Joint Request to Treat Settlement Agreement as Business
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`Confidential Information Pursuant to 35 U.S.C. § 317 (Paper 9).
`
`This proceeding is in its initial stages: Patent Owner has not yet filed
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`a preliminary response, and we have not instituted a trial. The Parties
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`indicate that they have settled their underlying dispute and have agreed, in
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`the Settlement Agreement, a true and correct copy of which they have filed
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`with their motion, to terminate this proceeding. Paper 8, 1–2. The Parties
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`further indicate that a related district court litigation, captioned Synaptics
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`Inc. v. Goodix Technology Inc. et al., Civil Action No. 3:15-cv-01742, was
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`dismissed by the U.S. District Court for the Northern District of California
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`on March 30, 2016; that the Parties filed a Joint Motion for Termination of
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`Investigation Based on Settlement in a related U.S. International Trade
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`Commission investigation, captioned In the Matter of Certain Touchscreen
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`Controllers and Products Containing the Same, Inv. No. 337-TA-957 on
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`March 29, 2016; that no other proceedings concerning the subject patent are
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`contemplated by the Parties in the foreseeable future; that the Settlement
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`Agreement was duly executed by the Parties on March 26, 2016; that the
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`Settlement Agreement is the entire and complete settlement agreement
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`2
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`
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`IPR2016-00464
`Patent 8,558,811 B2
`
`between the Parties; and that, beyond the Settlement Agreement, there are no
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`other written or oral agreements or understandings, including any collateral
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`agreements, between the Parties, including but not limited to other licenses,
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`covenants not to sue, confidentiality agreements, or other agreements of any
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`kind, that are made in connection with or in contemplation of the termination
`
`of the IPR proceeding. Id.
`
`Under these circumstances, we determine that it is appropriate to
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`dismiss the Petition. See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does
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`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 is granted;
`
`FURTHER ORDERED that Shenzhen Huiding Technology Co.,
`
`Ltd.’s Petition for Inter Partes Review of U.S. Patent No. 8,558,811 B2
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`(Paper 2) is dismissed, pursuant to 37 C.F.R. §§ 42.5(a) and 42.71(a);
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`FURTHER ORDERED that the Parties’ Joint Request to Treat
`
`Settlement Agreement as Business Confidential Information Pursuant to
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`35 U.S.C. § 317 is granted; and
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`FURTHER ORDERED that the Settlement Agreement 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).
`
`
`
`
`
`3
`
`
`
`IPR2016-00464
`Patent 8,558,811 B2
`
`
`For PETITIONER:
`
`Bing Ai
`John P. Schnurer
`James Coughlan
`Kevin J. Patariu
`PERKINS COIE LLP
`
`goodix-synaptics-IPR-service@perkinscoie.com
`ai-ptab@perkinscoie.com
`jschnurer@perkinscoie.com
`jcoughlan@perkinscoie.com
`kpatariu@perkinscoie.com
`
`For PATENT OWNER:
`
`Robert P. Lord
`Peter C. Schechter
`Jeffery Langer
`OSHA LIANG LLP
`
`lord@oshaliang.com
`schechter@oshaliang.com
`langer@oshaliang.com
`
`
`
`4
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