`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC.,
`Petitioner,
`
`v.
`
`LARGAN PRECISION CO., LTD.,
`Patent Owner.
`
`U.S. Patent No. 8,988,796
`
`Case No.: IPR2021-00641
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`Mail Stop Inter Partes Review
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`In accordance with 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.74,
`
`Petitioner HP Inc. and Patent Owner Largan Precision Co., Ltd. jointly request
`
`termination of this Inter Partes Review proceeding, No. IPR2021-00641.
`
`On April 7, 2021, during a mediation conference before Chief Magistrate
`
`Judge Spero in the United States District Court for the Northern District of
`
`California, the parties agreed to resolve their disputes relating to United States Patent
`
`No. 8,988,796, dismissing with prejudice the co-pending litigation (Largan
`
`Precision Co., Ltd. v. Ability Opto-Electronics Technology Co., Ltd, et al., No. 3:20-
`
`cv-06607-JD) and requesting termination of this proceeding.
`
`The parties have executed a Stipulation of Dismissal, which was granted by
`
`the Court on April 15, 2021. Both the Stipulation and the Court’s Order dismissing
`
`the co-pending litigation are submitted concurrently herewith. In accordance with
`
`the Stipulation, the co-pending litigation has been dismissed with prejudice. There
`
`are no other collateral agreements or understandings made in connection with, or in
`
`contemplation of, the termination of this proceeding.
`
`In view of the resolution between the parties, no dispute remains between the
`
`parties as to United States Patent No. 8,988,796, and thus termination of this
`
`proceeding is appropriate as Patent Owner has not filed a preliminary response nor
`
`has the Board rendered an institution decision in this proceeding. Termination of
`
`this proceeding is also consistent with the “strong public policy reasons favoring
`
`2
`
`
`
`settlement between the parties to a proceeding.” See Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Further, consistent with 37
`
`C.F.R. § 42.71(a), termination of this proceeding will promote efficiency and
`
`minimize unnecessary costs.
`
`For these reasons, the Parties respectfully request that the Board grant this
`
`joint motion for termination.
`
`Date: April 16, 2021
`
`By: /Sasha G. Rao/ .
`Sasha G. Rao
`Reg. No. 57,017
`srao@maynardcooper.com
`Postal and Hand(cid:173)Delivery Address:
`MAYNARD, COOPER & GALE, LLP
`Transamerica Pyramid Center
`600 Montgomery Street, Suite 2600
`San Francisco, CA 94111
`Telephone: 415.646.4702
`Fax: 205.714.6420
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned hereby certifies that on this
`
`date, a true and correct copy of the foregoing was served via electronic mail on all
`
`counsel of record.
`
`Date: April 16, 2021
`
`/Sasha G. Rao/ .
`Sasha G. Rao
`
`4
`
`
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