LARGAN PRECISION CO., LTD

Patent Trials and Appeals Board

Mar 15, 2021

IPR2020-01345 (P.T.A.B. Mar. 15, 2021)

Trials@uspto.gov Paper 15
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
2
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.
IPR2020-01339, Patent 8,988,796 B2
IPR2020-01345, Patent 8,395,691 B2
3
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;
IPR2020-01339, Patent 8,988,796 B2
IPR2020-01345, Patent 8,395,691 B2
4
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.

IPR2020-01339, Patent 8,988,796 B2
IPR2020-01345, Patent 8,395,691 B2
5
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