Paper 14
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 15, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABILITY OPTO-ELECTRONICS TECHNOLOGY CO., LTD,
`Petitioner,
`
`v.
`
`LARGAN PRECISION CO., LTD.,
`Patent Owner.
`
`
`IPR2020-01339, Patent 8,988,796 B21
`IPR2020-01345, Patent 8,395,691 B2
`
`
`
`Before MINN CHUNG, NORMAN H. BEAMER, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 15, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABILITY OPTO-ELECTRONICS TECHNOLOGY CO., LTD,
`Petitioner,
`
`v.
`
`LARGAN PRECISION CO., LTD.,
`Patent Owner.
`
`
`IPR2020-01339, Patent 8,988,796 B21
`IPR2020-01345, Patent 8,395,691 B2
`
`
`
`Before MINN CHUNG, NORMAN H. BEAMER, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2020-01339, Patent 8,988,796 B2
`IPR2020-01345, Patent 8,395,691 B2
`
`On March 8, 2021, the parties filed, with our authorization, in each of
`
`the proceedings (i) a Joint Motion to Terminate Pursuant to 35 U.S.C. § 317
`and 37 C.F.R. §§ 42.5, 42.71(a), and 42.74 (Paper 12,2 “Joint Motion to
`Terminate”); (ii) written settlement materials (Ex. 1050); and (iii) a Joint
`Request to File Settlement Materials as Business Confidential Information
`and to Maintain Said Materials Separate From the Public File Pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 13, “Joint Request”).
`
`The parties indicate that they have settled their dispute concerning
`U.S. Patent Nos. 8,988,796 B2 and 8,395,691 B2 (“the ’796 and ’691
`patents”), and that the parties have agreed to terminate these proceedings.
`Joint Motion to Terminate 1–2. The parties state in each Joint Motion to
`Terminate that they “certify that they are concurrently filing a true and
`complete copy of their confidential written settlement materials
`(Confidential Exhibit 1050) in connection with this matter as required by
`statute.” Id. at 1.
`
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. 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, including
`. . . pursuant to a joint request under 35 U.S.C. 317(a) . . . .”); see also Patent
`
`
`2 The parties filed substantially identical papers pertaining to this
`termination in both IPR2020-01339 and IPR2020-01345. We cite to the
`papers in IPR2020-01339.
`
`2
`
`
`
`IPR2020-01339, Patent 8,988,796 B2
`IPR2020-01345, Patent 8,395,691 B2
`
`Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) at
`86, available at https://www.uspto.gov/sites/default/files/documents/
`tpgnov.pdf (“The Board expects that a proceeding will terminate after the
`filing of a settlement agreement, unless the Board has already decided the
`merits of the proceeding.” (citing 35 U.S.C. §§ 317(a), 327)).
`
`We instituted a trial in each of these proceedings on February 22,
`2021. We have not yet decided the merits of the proceedings, and final
`written decisions have not been entered. Notwithstanding that the
`proceedings have moved beyond the preliminary stage, the parties have
`shown adequately that terminating the proceedings is appropriate.
`Accordingly, we are persuaded that, under these circumstances, it is
`appropriate to terminate these proceedings as to all parties.
`
`Additionally, we grant the parties’ Joint Request in each proceeding to
`treat their settlement materials as business confidential information and to
`keep the materials separate from the files of the ’796 and ’691 patents. Joint
`Request 1–2; see 35 U.S.C. § 317(b) (“At the request of a party to the
`proceeding, the agreement or understanding shall be treated as business
`confidential information, shall be kept separate from the file of the involved
`patents, and shall be made available only to Federal Government agencies
`on written request, or to any person on a showing of good cause.”); see also
`37 C.F.R. § 42.74(c) (same).
`
`This Decision 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 is granted in
`each of these proceedings;
`
`3
`
`
`
`IPR2020-01339, Patent 8,988,796 B2
`IPR2020-01345, Patent 8,395,691 B2
`
`FURTHER ORDERED that the parties’ Joint Request is granted in
`
`each of these proceedings;
`
`FURTHER ORDERED that the written settlement materials (Exhibit
`1050) be treated as business confidential information, kept separate from the
`files of the ’796 and ’691 patents, and 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); and
`
`FURTHER ORDERED that these proceedings are terminated.
`
`
`
`
`
`
`4
`
`
`
`IPR2020-01339, Patent 8,988,796 B2
`IPR2020-01345, Patent 8,395,691 B2
`
`FOR PETITIONER:
`Matthew W. Johnson
`John A. Marlott
`JONES DAY
`mwjohnson@jonesday.com
`jamarlott@jonesday.com
`
`FOR PATENT OWNER:
`
`Joseph F. Edell
`Adam A. Allgood
`FISCH SIGLER LLP
`joe.edell.IPR@fischllp.com
`adam.allgood@fischllp.com
`
`5
`
`
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