`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`Paper: 5
`
`
`
` Entered: April 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN CHINA STAR OPTOELECTRONICS
`TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`AU OPTRONICS CORPORATION,
`Patent Owner.
`____________
`
`Cases IPR2016-00548 (Patent 6,689,629 C1)
`IPR2016-00550 (Patent 7,652,285 B2)1
`____________
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, BRIAN P. MURPHY, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This order addresses the same issue in both cases. We exercise our
`discretion to issue one order to be filed in each case. The parties are
`authorized to use this style heading when filing a single paper in both
`proceedings, provided that such heading includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the heading.”
`
`
`
`IPR2016-00548 (Patent 6,689,629 C1)
`IPR2016-00550 (Patent 7,652,285 B2)
`
`
`A conference call was held on Thursday, April 14, 2016, among
`John F. Rabena, counsel for Petitioner, Shenzhen China Star Optoelectronics
`Technology Co., Ltd. (“China Star”); Vincent K. Yip and Peter J. Wied,
`counsel for Patent Owner AU Optronics Corporation; and Administrative
`Patent Judges Roesel, Obermann, and Murphy. The parties jointly requested
`the conference call to request authorization to file a motion to terminate the
`above-referenced proceedings.
`During the call, Petitioner explained that, pursuant to an agreement
`between the parties, the challenged patents are the subject of an arbitration
`proceeding in Hong Kong, that the arbitrator has determined that the
`arbitrator has sole authority to adjudicate the parties’ dispute regarding the
`challenged patents, and that the arbitrator has ordered China Star to
`terminate the inter partes review proceedings. Patent Owner agreed with
`Petitioner’s explanation. The parties seek authorization to file a joint motion
`to terminate the proceedings.
`These proceedings are at an early stage. Patent Owner has not yet
`filed a Preliminary Response, and we have not instituted a trial. Under these
`circumstances, we authorize the parties to file a joint motion to dismiss the
`petitions. The joint motion should include a brief explanation as to why
`dismissal is appropriate and should include a copy of the arbitrator’s order
`referenced by Petitioner.
`
`2
`
`
`
`IPR2016-00548 (Patent 6,689,629 C1)
`IPR2016-00550 (Patent 7,652,285 B2)
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the parties are authorized to file, within 10 business
`days of this order, a joint motion to dismiss the petitions;
`FURTHER ORDERED that the joint motion must be accompanied by
`copy of the arbitrator’s order, which should be filed as an exhibit pursuant to
`37 C.F.R. § 42.63.
`
`
`3
`
`
`
`IPR2016-00548 (Patent 6,689,629 C1)
`IPR2016-00550 (Patent 7,652,285 B2)
`
`PETITIONER:
`William H. Mandir
`wmandir@sughrue.com
`
`John F. Rabena
`jrabena@sughrue.com
`
`PATENT OWNER:
`Vincent K. Yip
`vincent.yip@ltlattorneys.com
`
`Peter J. Wied
`peter.wied@ltlattorneys.com
`
`Justin I. King
`jking@wpat.com
`
`
`
`
`
`4
`
`
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