`571-272-7822
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`Paper 8
`Entered: May 12, 2021
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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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`HP INC.,
`Petitioner,
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`v.
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`LARGAN PRECISION CO., LTD.,
`Patent Owner.
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`IPR2021-00641
`Patent 8,988,796 B1
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`
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`Before MINN CHUNG, NORMAN H. BEAMER, and
`JOHN D. HAMANN Administrative Patent Judges.
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`BEAMER, Administrative Patent Judge.
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`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
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`IPR2021-00641
`Patent 8,988,796 B1
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`I. INTRODUCTION
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`With the Board’s authorization, Petitioner and Patent Owner
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`(collectively “the Parties”) filed a Joint Motion to Terminate Inter Partes
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`Review. Paper 7 (“Joint Motion”). In support of the Joint Motion, the
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`Parties filed a copy of a Stipulation and Order of Dismissal from the U.S.
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`District Court for the Northern District of California. Ex. 1018.
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`II. DISCUSSION
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`In the Joint Motion, the Parties represent that “[i]n accordance with
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`the Stipulation, the co-pending litigation has been dismissed with prejudice”
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`and “no dispute remains between the parties as to United States Patent No.
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`8,988,796, and thus termination of this proceeding is appropriate.” Joint
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`Motion 2. The Parties further represent that “[t]here are no other collateral
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`agreements or understandings made in connection with, or in contemplation
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`of, the termination of this proceeding.” Id.
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`This proceeding is at an early stage, and we have not yet decided
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`whether to institute a trial in the proceeding. In view of the early stage of
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`the proceeding and the settlement between the Parties, we determine that
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`good cause exists to dismiss the petition and terminate this proceeding with
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`respect to the Parties.
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`In addition, on March 9, 2021, Petitioner HP, Inc. filed a Motion for
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`Joinder, seeking joinder of this proceeding with Ability Opto-Electronics
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`Co., Ltd. v. Largan Precision Co., Ltd., Case IPR2020-01339. Paper 3. In
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`view of the termination of this proceeding, the Motion for Joinder is
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`dismissed as moot.
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`2
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`IPR2021-00641
`Patent 8,988,796 B1
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`This Order does not constitute a final written decision pursuant to
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`35 U.S.C. § 318(a).
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`III. ORDER
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`Accordingly, for the reasons discussed above, it is:
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`ORDERED that the Joint Motion (Paper 9) is granted, and the petition
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`in IPR2021-00641 is dismissed and this proceeding is terminated; and
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`FURTHER ORDERED, that Petitioner’s Motion for Joinder (Paper 3)
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`is dismissed as moot.
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`3
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`IPR2021-00641
`Patent 8,988,796 B1
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`FOR PETITIONER:
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`Sasha Rao
`Brandon Story
`MAYNARD, COOPER & GALE, LLP
`srao@maynardcooper.com
`bstroy@maynardcooper.com
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`FOR PATENT OWNER:
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`Joseph Edell
`Kyle Tsui
`FISCH SIGLER LLP
`Joe.edell.ipr@fischllp.com
`Kyle.tsuiWfischllp.com
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`4
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