`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Preciseley Microtechnology Corp.,
`Petitioner
`
`v.
`
`Dicon Fiberoptics, Inc., Patent Owner
`
`U.S. Patent No.: 6,838,738
`Filed: February 20, 2002
`Issued: January 4, 2005
`Inventors: Benedict J. Costello, Peter T. Jones,
`and Ho-Shang Lee
`Assignee: Dicon Fiberoptics, Inc.
`Title: ELECTROSTATIC CONTROL OF MICROOPTICAL COMPONENTS
`
`Inter Partes Review No. IPR2015-01728
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`UNDER 35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`
`
`
`Preciseley v. Dicon
`IPR2015- 1728
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, Petitioner
`
`Preciseley Microtechnology Corp. (“Preciseley”) and Patent Owner DiCon
`
`Fiberoptics, Inc. (“DiCon”) jointly file this request for termination of this inter
`
`partes review of U.S. Patent No. 6,838,738.
`
`A petition for inter partes review was filed by Preciseley on August 14,
`
`2015. The Board instituted trial in this proceeding on February 11, 2016 (Paper
`
`No. 6). The parties have settled their dispute and have agreed in a confidential
`
`settlement agreement (“Settlement Agreement”) to terminate this proceeding (Case
`
`IPR2015-01728). The related district court litigation styled DiCon Fiberoptics,
`
`Inc. v. Preciseley Microtechnology Corporation, Civil Action No. 5:15-cv-01362-
`
`BLF pending in the U.S. District Court for the Northern District of California, has
`
`been finally resolved as set forth in the Settlement Agreement. No other
`
`proceedings concerning the subject patent are contemplated by these parties in the
`
`foreseeable future. The confidential Settlement Agreement is in writing and was
`
`executed by Preciseley and DiCon on February 15, 2016.
`
`The Parties certify that, beyond the Settlement Agreement, there are no other
`
`written or oral agreements or understandings, including any collateral agreements,
`
`between the Parties, including but not limited to other licenses, covenants not to
`
`sue, confidentiality agreements, or other agreements of any kind, that are made in
`
`connection with, or in contemplation of, the termination of the IPR proceeding.
`
`1
`
`
`
`Preciseley v. Dicon
`IPR2015- 1728
`
`
`In accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true and
`
`correct copy of the agreed-upon confidential Settlement Agreement is being
`
`submitted herewith as Exhibit 1014. The parties file this joint motion to provide
`
`the Board with notice of this critical development as early as possible in the
`
`interest of efficiency.
`
`Also submitted concurrently herewith is a request by Precisely and Dicon
`
`that the Settlement Agreement be treated as business confidential information, be
`
`kept separate from the file of the involved patents, and be 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).
`
`Termination is appropriate to prevent unnecessary expenditure of party
`
`resources and to preserve judicial resources such that the Board may focus on other
`
`matters. Accordingly, the parties respectfully request termination of this
`
`proceeding, and that the instant matter be closed.
`
`The Parties certify that they have conferred on this filing and that it is made
`
`jointly.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with the filing to Deposit Account 50-0591.
`
`2
`
`
`
`Preciseley v. Dicon
`IPR2015- 1728
`
`Dated: February 17, 2016
`
`
`
`
`
`
`Respectfully submitted,
` /s/ Robert P. Lord
`Robert P. Lord (Reg. No. 46,479)
`Tammy J. Terry (Reg. No. 69, 167)
`Jeffrey R. Guinn (Reg. No. 72,863)
`OSHA LIANG LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`Tel: 713.228.8600/Fax: 713.228.8778
`Counsel for Petitioner
`
`
`Dated: February 17, 2016
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Erica D. Wilson
`Erica D. Wilson (Reg. No. 42,230)
`Eric S. Walters (Reg. No. 45,422)
`Philip H. Albert (Reg. No. 35,819)
`DAVIS WRIGHT TREMAINE LLP
`505 Montgomery St., Suite 800
`San Francisco, CA 94111-6533
`Tel: (415) 276-6500
`Fax: (415) 276-6599
`
`Counsel for Patent Owner
`
`
`
`3
`
`
`
`Preciseley v. Dicon
`IPR2015- 1728
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
`
`42.105(a) of a copy of this Joint Motion to Terminate Proceedings Under 35
`
`U.S.C. § 317(a) on Patent Owner Dicon Fiberoptics, Inc. via email as follows:
`
`Respectfully submitted,
`/s/ Robert P. Lord
`Robert P. Lord (Reg. No. 46,479)
`OSHA LIANG LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`Tel: 713.228.8600/Fax: 713.228.8778
`
`Counsel for Petitioner
`
`
`Erica Wilson
`EricaWilson@dwt.com
`Davis Wright Tremaine LLP
`505 Montgomery St., Suite 800
`San Francisco, CA 94111-6533
`
`Dated: February 17, 2016
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