IPR2021-00638 (P.T.A.B. Aug. 27, 2021)

Chien-Min Sung

Patent Trials and Appeals BoardAug 27, 2021

IPR2021-00638 (P.T.A.B. Aug. 27, 2021)

Trials@uspto.gov Paper No. 9 571-272-7822 Date: August 27, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD KINIK COMPANY, Petitioner, v. CHIEN-MIN SUNG, Patent Owner. IPR2021-00638 Patent 9,724,802 B2 Before PHILLIP J. KAUFFMAN, TIMOTHY J. GOODSON, and JASON W. MELVIN, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. §§ 42.71, 42.74 IPR2021-00638 Patent 9,724,802 B2 2 I. DISCUSSION Petitioner, Kinik Company, and Patent Owner, Chien-Min Sung (collectively “Parties”), request that the Petition for inter partes review in this proceeding be dismissed pursuant to settlement. Paper 8 (“Motion”). The Parties filed a copy of their Settlement Agreement. Ex. 1030.1 The Parties state that the Settlement Agreement “resolves all underlying disputes with respect to U.S. Patent No. 9,724,802,” the patent challenged in this proceeding. Motion 1. They note also that the district-court litigation between the parties “has now been dismissed with prejudice.” Id. at 2. This proceeding is at an early stage, and we have not yet decided whether to institute a trial in this proceeding. In view of the early stage of this proceeding and the settlement between the Parties, we determine that good cause exists to dismiss the Petition. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). II. ORDER Accordingly, it is ORDERED that the Joint Motion to Dismiss the Petition is granted, and the petition in IPR2021-00638 is dismissed. 1 The parties indicate that Exhibit 1030 is a certified translation of “court transcripts consisting of the Settlement Agreement between Sung and Kinik executed before the Intellectual Property Court of Taiwan.” Motion 1 n.1. Trials@uspto.gov Paper No. 571-272-7822 Date: PETITIONER: Brian C. McCormack Mackenzie Martin D. Yoon Chae BAKER & McKENZIE LLP brian.mccormack@bakermckenzie.com mackenzie.martin@bakermckenzie.com yoon.chae@bakermckenzie.com PATENT OWNER: Timothy Devlin Alex Chan DEVLIN LAW FIRM LLC Td-ptab@devlinlawfirm.com achan@devlinlawfirm.com