`
`
`
`
`
`
`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.
`_____________
`
`IPR2020-01545
`Patent 9,146,378 B2
`____________
`
`
`
`Before MINN CHUNG, NORMAN H. BEAMER, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R § 42.74
`
`
`
`
`
`
`
`
`IPR2020-01545
`Patent 9,146,378 B2
`
`On March 8, 2021, the parties filed, with our authorization, (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 10, “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 11, “Joint Request”).
`
`The parties indicate that they have settled their dispute concerning
`U.S. Patent No. 9,146,378 B2 (“the ’378 patent”), and that the parties have
`agreed to terminate this proceeding. Joint Motion to Terminate 1–2. The
`parties state in the 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
`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
`
`2
`
`
`
`IPR2020-01545
`Patent 9,146,378 B2
`
`agreement, unless the Board has already decided the merits of the
`proceeding.” (citing 35 U.S.C. §§ 317(a), 327)). Here, the trial has not yet
`been instituted and the merits of the proceeding not yet decided.
`Accordingly, we are persuaded that, under these circumstances, it is
`appropriate to dismiss the Petition (Paper 1) and terminate this proceeding.
`
`Additionally, we grant the parties’ Joint Request to treat their
`settlement materials as business confidential information and to keep the
`materials separate from the files of the ’378 patent. 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 as
`to this proceeding;
`
`FURTHER ORDERED that the parties’ Joint Request is granted;
`
`FURTHER ORDERED that the written settlement materials (Exhibit
`1050) be treated as business confidential information, kept separate from the
`file of the ’378 patent, 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
`
`3
`
`
`
`IPR2020-01545
`Patent 9,146,378 B2
`
`FURTHER ORDERED that the Petition is dismissed and this
`
`proceeding is terminated as to all parties.
`
`
`
`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
`
`4
`
`
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