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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ABILITY OPTO-ELECTRONICS TECHNOLOGY CO., LTD,
`Petitioner
`
`v.
`
`LARGAN PRECISION CO., LTD.,
`Patent Owner
`
`
`
`IPR2020-01339
`IPR2020-01345
`IPR2020-01545
`
`
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317 AND
`37 C.F.R. §§ 42.5, 42.71(a), 42.72, AND 42.74
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.5, 42.71(a), 42.72 and 42.74,
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`and the Board’s authorization received on March 5, 2021, Petitioner Ability Opto-
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`Electronics Technology Co., Ltd. (“Petitioner” or “Ability”) and Patent Owner
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`Largan Precision Co., Ltd. (“Patent Owner” or “Largan”) jointly move to terminate
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`the present inter partes review proceedings in light of Patent Owner and
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`Petitioner’s settlement of all pending litigation (i.e., district court, Patent Trial and
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`Appeal Board, or otherwise) between the parties involving the patents at issue in
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`these matters.
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`Petitioner and Patent Owner certify that they are concurrently filing a true
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`and complete copy of their confidential written settlement materials (Confidential
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`Exhibit 1050) in connection with this matter as required by statute. A joint request
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`to treat the settlement materials (Confidential Exhibit 1050) as business
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`confidential information kept separate from the file of the involved patents
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`pursuant to 35 U.S.C. § 317(b) is being filed concurrently.
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`LEGAL STANDARD
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`An inter partes review proceeding “shall be terminated with respect to any
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`petitioner upon the joint request of the petitioner and the patent owner, unless the
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`Office has decided the merits of the proceeding before the request for termination
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`is filed.” 35 U.S.C. § 317(a). A joint motion to terminate generally “must (1)
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`include a brief explanation as to why termination is appropriate; (2) identify all
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`parties in any related litigation involving the patents at issue; (3) identify any
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`related proceedings currently before the Office, and (4) discuss specifically the
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`current status of each such related litigation or proceeding with respect to each
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`party to the litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc.,
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`IPR2014-00018, Paper 26 at 2 (PTAB July 28, 2014).
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`ARGUMENT
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`Termination of the present inter partes review proceedings is appropriate
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`because (1) Petitioner and Patent Owner have settled their disputes and have
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`agreed to terminate the proceedings, (2) the Office has not yet decided the merits
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`of the proceedings, and (3) public policy favors the termination.
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`First, the parties’ settlement completely resolves the controversy between
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`Patent Owner and Petitioner relating to the U.S. patents before the Board and in the
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`co-pending litigation.
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`Second, the Office has not decided the merits of the proceedings.
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`Third, public policy favors the termination. As recognized by the rules of
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`practice before the Board:
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`There are strong public policy reasons to favor settlement
`between the parties to a proceeding. The Board will be
`available to facilitate settlement discussions, and where
`2
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`appropriate, may require a settlement discussion as part
`of the proceeding. 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. 35 U.S.C. §§ 317(a), 327.
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`Consolidated Trial Practice Guide (Nov. 2019) at 86. Moreover, no public interest
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`or other factors militate against termination of this proceeding.
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`Following settlement, there will be no pending litigation or contested
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`proceeding in any forum (i.e., district court, Patent Trial and Appeal Board, or
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`otherwise) involving the patents at issue in these matters.
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`CONCLUSION
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`For the foregoing reasons, Petitioner and Patent Owner jointly and
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`respectfully request that the instant proceedings be terminated.
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`3
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`Date: March 8, 2021
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`
`
`/s/ Matthew W. Johnson
`
`Matthew W. Johnson (Reg. No. 59,108)
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`(412) 394-9524
`mwjohnson@jonesday.com
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`Attorney for Petitioner Ability Opto-
`Electronics Technology Co., Ltd.
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`Respectfully submitted,
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`
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`/s/ Joseph F. Edell
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`Joseph F. Edell (Reg. No. 67,625)
`FISCH SIGLER LLP
`5301 Wisconsin Avenue NW
`Fourth Floor
`Washington, DC 20015
`(202) 362-3524
`Joe.Edell.IPR@fischllp.com
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`Attorney for Patent Owner Largan
`Precision Co., Ltd.
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Joint Motion
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`to Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.5, 42.71(a), 42.72,
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`and 42.74 was served on March 8, 2021, by e-mailing copies to the following
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`counsel of record for Patent Owner Largan Precision Co., Ltd.:
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`Joseph F. Edell (joe.edell.IPR@fischllp.com)
`Adam A. Allgood (adam.allgood@fischllp.com)
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`Date: March 8, 2021
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`
`
`/s/ Matthew W. Johnson
`
`Matthew W. Johnson (Reg. No. 59,108)
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`(412) 394-9524
`mwjohnson@jonesday.com
`
`Attorney for Petitioner Ability Opto-
`Electronics Technology Co., Ltd.
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