Oyster Optics, LLC

Patent Trials and Appeals Board

Oct 27, 2021

IPR2021-00565 (P.T.A.B. Oct. 27, 2021)

Trials@uspto.gov Paper 17
571-272-7822 Entered: October 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CIENNA CORPORATION,
Petitioner,
v.
OYSTER OPTICS LLC,
Patent Owner.

IPR2021-00565
Patent 10,554,297 B2

Before JAMESON LEE, PATRICK M. BOUCHER, and
JOHN R. KENNY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

On September 7, 2021, the parties filed a Joint Motion to Terminate
this proceeding. Paper 14 (“Motion”). The Motion states that Patent Owner
and Petitioner “have settled their dispute as to the ’297 Patent and have
agreed to terminate this inter partes review.” Motion 1. The Motion also
refers to Exhibit 2101, filed on September 7, 2021, as “the Parties’
IPR2021-00565
Patent 10,554,297 B2

2
agreement,”1 and further states: “The Patent Owner and Petitioner certify
that there are no other collateral agreements or understandings made in
connection with, or in contemplation of, the termination of this inter partes
review.” Id. at 1–2.
We instituted inter partes review on August 23, 2021. Paper 11.
Patent Owner has not yet filed its Patent Owner Response, and we have not
yet issued a final written decision.
The Motion explains: “Given the early stage of the proceeding and
because the Board has not conducted an oral hearing or decided the merits of
the proceeding, this motion should be granted in accordance with [35 U.S.C.
§ 317].” Motion 3. The Motion further explains: “Termination of this inter
partes review would save the parties from significant further expenditure of
resources, and no public interest factors weigh against termination of this
proceeding.” Id.
“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.” 35 U.S.C.
§ 317(a). There is no other petitioner entity remaining in the proceeding
after termination of Petitioner. Under the circumstances here, we agree it
also would be appropriate to terminate the proceeding with respect to Patent
Owner without rendering a final written decision. See 37 C.F.R. § 42.72.

1 Exhibit 2101 was filed as a public paper and the parties have not filed any
request under 37 C.F.R. § 42.74(c) to have it treated as business confidential
information and kept separate from the files of the involved patent.
IPR2021-00565
Patent 10,554,297 B2

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Accordingly, it is
ORDERED that the Joint Motion to Terminate is granted; and
FURTHER ORDERED that this proceeding is terminated in its
entirety with respect to both Petitioner and Patent Owner.

IPR2021-00565
Patent 10,554,297 B2

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For PETITIONER:
Christina Ondrick
John S. Holley
MCKOOL SMITH, P.C.
condrick@mckoolsmith.com
jholley@mckoolsmith.com

For PATENT OWNER:
Wayne M. Helge
James T. Wilson
DAVIDSON BERQUIST JACKSON & GOWDEY L.L.P.
whelge@dbjg.com
jwilson@dbjg.com