IPR2021-00190 (P.T.A.B. Oct. 7, 2021)

Ultravision Technologies, LLC

Patent Trials and Appeals BoardOct 7, 2021

IPR2021-00190 (P.T.A.B. Oct. 7, 2021)

Trials@uspto.gov Paper 13 571-272-7822 Entered: October 7, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SHENZHEN AOTO ELECTRONICS CO., LTD., Petitioner, v. ULTRAVISION TECHNOLOGIES, LLC, Patent Owner. IPR2021-00190 Patent 9,047,791 B2 Before DENISE M. POTHIER, SCOTT A. DANIELS, and ROBERT L. KINDER, Administrative Patent Judges. DANIELS, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-00190 Patent 9,047,791 B2 2 On September 27, 2021, with Board authorization, Petitioner and Patent Owner (collectively “the Parties”) filed a Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 the above-captioned proceeding. Paper 11 (“Joint Motion”). Along with the Joint Motion, the Parties filed a copy of a Joint Stipulation of Non-Infringement (Ex. 1024, “Joint Stipulation) that has been filed in the District Court proceeding. See 37 C.F.R. § 42.74(b) (any agreement between the parties made in connections the termination of a proceeding shall be in writing and filed with the Board). In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek termination of the above-identified inter partes review proceeding, and that the filed copy of the Joint Stipulation is a true and accurate copy of their agreement. Joint Motion 1. The Parties further represent that “there are no other agreements or understandings, oral or written, between Patent Owner and Petitioner, including any collateral agreements, in connection with or in contemplation of the termination of the present proceeding” and that in this proceeding “the parties have resolved their dispute with respect to the ’791 patent, and have agreed to terminate this IPR proceeding.” Id. at 2. This proceeding is at an early stage. No Patent Owner Response has been filed and we have not rendered a final decision on the merits. The parties have identified the co-pending litigation in which they have stipulated to non-infringement of the ’791 patent stating that “the Accused Products have not infringed and currently do not infringe the Asserted Claims of the ’791 patent.” Ex. 1024 ¶ 10. In view of the early stage of the proceeding and the Joint Stipulation between the Parties, we determine that good cause exists to dismiss the petition and terminate the proceeding with IPR2020-00190 Patent 9,047,791 B2 3 respect to the Parties. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). For the foregoing reasons, it is: ORDERED that the Joint Motion is granted and this proceeding is terminated with respect to Petitioner and Patent Owner. IPR2020-00190 Patent 9,047,791 B2 4 FOR PETITIONER: E. Robert Yoches Elizabeth A. Niemeyer Yongyuan (Michelle) G. Rice FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP bob.yoches@finnegan.com elizabeth.niemeyer@finnegan.com michelle.rice@finnegan.com FOR PATENT OWNER: Peter Lambrianakos Vincent J. Rubino Joseph M. Mercadante Enrique W. Iturralde FABRICANT LLP plambrianakos@fabricantllp.com vrubino@fabricantllp.com jmercadante@fabricantllp.com eiturralde@fabricantllp.com IPR2020-00190 Patent 9,047,791 B2 5