Preciseley Microtechnology Corp.v.Dicon Fiberoptics, Inc.

Patent Trial and Appeal Board

Feb 26, 2016

10081496 (P.T.A.B. Feb. 26, 2016)

Trials@uspto.gov Paper No. 10
571-272-7822 Entered: February 26, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PRECISELEY MICROTECHNOLOGY CORP.,
Petitioner,

v.

DICON FIBEROPTICS, INC.,
Patent Owner.
____________

Case IPR2015-01728
Patent 6,838,738 B1
____________

Before LORA M. GREEN, JONI Y. CHANG, and
JACQUELINE T. HARLOW, Administrative Patent Judges.

HARLOW, Administrative Patent Judge.

DECISION
Termination of Proceeding
37 C.F.R. § 42.73

IPR2015-01728
Patent 6,838,738 B1

2
On February 17, 2016, the parties filed a joint motion to terminate the
instant proceeding pursuant to a settlement agreement.1 Paper 8. The
parties also filed a true copy of their written settlement agreement, made in
connection with the termination of the instant proceeding, in accordance
with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Ex. 1014. Additionally,
the parties submitted a joint request to have their settlement agreement
treated as confidential business information under 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c). Paper 9.
The Board instituted the instant inter partes review of U.S. Patent
No. 6,838,738 B1 (“the ’738 patent”) on February 11, 2016. Paper 6.
Neither a Patent Owner response, nor a reply by Petitioner has been filed,
and no final hearing has been held.
In their joint motion to terminate, the parties indicate that they have
settled their dispute, and reached agreement to terminate the instant
proceeding. Paper 8, 1. Under the terms of their agreement, the parties also
are required to dismiss with prejudice all claims and counterclaims asserted
in the related litigation. Id.
Upon consideration of the parties’ contentions, we agree with the
parties that terminating the instant proceeding with respect to both Petitioner
and Patent Owner, at this early juncture, promotes efficiency and minimizes

1 We note that pursuant to 37 C.F.R. § 42.20(b), the parties should have
requested authorization to file a motion for termination prior to submission
of the instant motion. Because no prejudice arises from this oversight,
however, we waive the requirements of 37 C.F.R. § 42.20(b) in this instance,
and address the merits of the joint motion for termination.
IPR2015-01728
Patent 6,838,738 B1

3
unnecessary costs. Based on the facts of this case, it is appropriate to enter
judgment2 without rendering a final written decision. See 35 U.S.C.
§ 317(a); 37 C.F.R. § 42.72.
Accordingly, it is:
ORDERED that the joint motion to terminate IPR2015-01728 is
granted;
FURTHER ORDERED that the instant proceeding is hereby
terminated as to all parties, including Petitioner and Patent Owner; and
FURTHER ORDERED that the parties’ joint request that the
settlement agreement be treated as business confidential information kept
separate from the patent file, 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), is
granted.

2 A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
IPR2015-01728
Patent 6,838,738 B1

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PETITIONER:

Robert P. Lord
Tammy J. Terry
Jeffrey R. Guinn
OSHA LIANG LLP
lord@oshaliang.com
terry@oshaliang.com
guinn@oshaliang.com

PATENT OWNER:

Erica D. Wilson
Eric S. Walters
Philip H. Albert
James Hsue
DAVIS WRIGHT TREMAINE LLP
ericawilson@dwt.com
ericwalters@dwt.com
philipalbert@dwt.com
JamesHsue@dwt.com