throbber
Trials@uspto.gov
`571-272-7822
`
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` Paper: 9
`
`
`Entered: May 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN CHINA STAR OPTOELECTRONICS
`TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`AU OPTRONICS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00548 (Patent 6,689,629 C1)
`Case IPR2016-00550 (Patent 7,652,285 B2)1
`____________
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, BRIAN P. MURPHY, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`DECISION
`Dismissing Petitions
`37 C.F.R. §§ 42.5(a), 42.71(a)
`
`
`
`
`
`
`1 This decision addresses what the parties represent is the same motion filed
`in IPR2016-00548 and IPR2016-00550; therefore, we issue a single decision
`to be entered in both cases.
`
`

`
`IPR2016-00548 (Patent 6,689,629 C1)
`IPR2016-00550 (Patent 7,652,285 B2)
`
`
`BACKGROUND
`On April 21, 2016, with the Board’s prior authorization, the parties
`filed a “Joint Motion To Terminate Inter Partes Reviews” requesting
`termination of the proceedings pursuant to 35 U.S.C. § 317(a). Paper 6.2
`The motion explains that Patent Owner, AU Optronics Corporation, and
`Petitioner, Shenzhen China Star Optoelectronics Technology Co., Ltd.
`(“China Star”) are parties to an arbitration proceeding filed September 22,
`2015 in Hong Kong. Id. at 2. The motion further explains that, on
`March 30, 2016, the arbitration tribunal issued a decision (“Partial Final
`Award”) regarding the scope of the parties’ arbitration agreement stating
`that the parties’ have agreed to resolve any dispute concerning validity and
`patentability of U.S. Patent Nos. 6,689,629 and 7,652,285 solely by means
`of arbitration. Id. The arbitration tribunal further ordered China Star to
`withdraw the petitions for inter partes reviews. Id.
`Concurrent with their motion, the parties filed a copy of the arbitration
`tribunal’s Partial Final Award, along with a “Joint Request To Keep Paper
`Separate As Confidential Business Information.” Papers 7, 8. The parties
`represent that the arbitration tribunal’s Partial Final Award contains
`confidential and business sensitive information and request that it be kept as
`a separate paper and only be made available under the provisions of
`35 U.S.C. § 317(b) and 37 CFR § 42.74(c). Paper 7.
`
`
`2 The papers referenced in this decision have the same paper numbers in
`IPR2016-00548 and IPR2016-00550.
`
`2
`
`

`
`IPR2016-00548 (Patent 6,689,629 C1)
`IPR2016-00550 (Patent 7,652,285 B2)
`
`
`ANALYSIS
`The parties request termination pursuant to 35 U.S.C. § 317(a), which
`provides in pertinent part:
`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.
`Although the heading of Section 317(a) is “Settlement,” the text of the
`statute is not so limited. In this case, the parties have entered into a
`settlement agreement containing an arbitration clause, the parties are
`engaged in an arbitration proceeding pursuant to that agreement, and the
`arbitration tribunal has determined that the disputes raised by the petitions
`for inter partes review are subject to the parties’ agreement to arbitrate. The
`parties request termination of the inter partes reviews in order to comply
`with the arbitration tribunal’s determination. Paper 6, 3. In effect, the
`parties have agreed to have their patentability dispute decided by the
`arbitration tribunal, rather than the Board.
`Importantly, these proceedings are at a very early stage. Patent
`Owner has not yet filed preliminary responses to the Petitions, and we have
`not considered the merits of the Petitions. Furthermore, dismissal of the
`petitions is consistent with the PTO’s general policy of encouraging
`participants in post-examination proceedings to use Alternative Dispute
`Resolution (ADR) procedures such as mediation and arbitration. Under
`these circumstances, we determine that it is appropriate to dismiss the
`Petitions. See 37 C.F.R. §§ 42.5(a), 42.71(a).
`We now turn to the parties’ request to keep the arbitration tribunal’s
`Partial Final Award confidential and separate from the patent files.
`
`3
`
`

`
`IPR2016-00548 (Patent 6,689,629 C1)
`IPR2016-00550 (Patent 7,652,285 B2)
`
`Although the provisions of 35 U.S.C. § 317(b) and 37 CFR § 42.74(c),
`expressly pertain to settlement agreements only, we determine that, under
`the present circumstances, these provisions are applicable to the arbitration
`tribunal’s Partial Final Award, which incorporates significant portions of the
`parties’ settlement agreement. Therefore, based upon the parties’
`representation that the arbitration tribunal’s Partial Final Award contains
`confidential and business sensitive information, we grant the parties’
`request.
`This paper does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Petition in each of these proceedings is dismissed;
`
`and
`
`FURTHER ORDERED that the arbitration tribunal’s Partial Final
`Award (Paper 8 in each of IPR2016-00548 and IPR2016-00550) shall be
`treated as business confidential information and shall be kept separate from
`the files of U.S. Patent Nos. 6,689,629 and 7,652,285.
`
`
`
`4
`
`

`
`IPR2016-00548 (Patent 6,689,629 C1)
`IPR2016-00550 (Patent 7,652,285 B2)
`
`PETITIONER:
`William H. Mandir
`wmandir@sughrue.com
`John F. Rabena
`jrabena@sughrue.com
`
`PATENT OWNER:
`Vincent K. Yip
`vincent.yip@ltlattorneys.com
`Peter J. Wied
`peter.wied@ltlattorneys.com
`Justin I. King
`jking@wpat.com
`
`5

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