Largan Precision Co., Ltd.

Patent Trials and Appeals Board

May 12, 2021

IPR2021-00637 (P.T.A.B. May. 12, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Entered: May 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HP INC.,
Petitioner,

v.

LARGAN PRECISION CO., LTD.,
Patent Owner.

IPR2021-00637
Patent 8,395,691 B2

Before MINN CHUNG, NORMAN H. BEAMER, and
JOHN D. HAMANN Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2021-00637
Patent 8,395,691 B2

2
I. INTRODUCTION
With the Board’s authorization, HP Inc. (“Petitioner”) and Largan
Precision Co., Ltd. (“Patent Owner”) (collectively “the Parties”) filed a Joint
Motion to Terminate Inter Partes Review. Paper 9 (“Joint Motion”).
In support of the Joint Motion, the Parties filed a copy of a Stipulation and
Order of Dismissal from the U.S. District Court for the Northern District of
California. Ex. 1018.
II. DISCUSSION
In the Joint Motion, the Parties represent that “[i]n accordance with
the Stipulation, the co-pending litigation has been dismissed with prejudice”
and “no dispute remains between the parties as to United States Patent No.
8,395,691, and thus termination of this proceeding is appropriate.” Joint
Motion 2. The Parties further represent that “[t]here are no other collateral
agreements or understandings made in connection with, or in contemplation
of, the termination of this proceeding.” Id.
This proceeding is at an early stage, and we have not yet decided
whether to institute a trial in the proceeding. In view of the early stage of
the proceeding and the settlement between the Parties, we determine that
good cause exists to dismiss the petition and terminate this proceeding with
respect to the Parties.
In addition, on March 9, 2021, Petitioner filed a Motion for Joinder,
seeking joinder of this proceeding with Ability Opto-Electronics Co., Ltd. v.
Largan Precision Co., Ltd., Case IPR2020-01345. Paper 3. In view of the
termination of this proceeding, the Motion for Joinder is dismissed as moot.

IPR2021-00637
Patent 8,395,691 B2

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This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion (Paper 9) is granted, and the petition
in IPR2021-00637 is dismissed and this proceeding is terminated; and
FURTHER ORDERED, that Petitioner’s Motion for Joinder (Paper 3)
is dismissed as moot.

IPR2021-00637
Patent 8,395,691 B2

4
FOR PETITIONER:

Sasha G. Rao
Brandon H. Story
MAYNARD, COOPER & GALE, LLP
srao@maynardcooper.com
bstroy@maynardcooper.com

FOR PATENT OWNER:

Joseph F. Edell
Kyle K. Tsui
FISCH SIGLER LLP
joe.edell.ipr@fischllp.com
kyle.tsui@fischllp.com