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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CANON INC.; CANON USA, INC.;
`CANON FINANCIAL SERVICES, INC.; FUJIFILM CORPORATION;
`FUJIFILM HOLDINGS AMERICA CORPORATION;
`FUJIFILM NORTH AMERICA CORPORATION; JVC KENWOOD
`CORPORATION; JVCKENWOOD USA CORPORATION;
`NIKON CORPORATION; NIKON INC.; OLYMPUS CORPORATION;
`OLYMPUS AMERICA INC.; PANASONIC CORPORATION;
`PANASONIC CORPORATION OF NORTH AMERICA;
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
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`v.
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`PAPST LICENSING GMBH & CO. KG
`Patent Owner.
`____________________
`Case IPR2016-012111
`Patent 8,504,746
`____________________
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION AND TO MAINTAIN SAID
`AGREEMENT SEPARATE FROM THE PUBLIC FILE PURSUANT TO 35
`U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`1 Case IPR2017-00678, filed by LG Electronics, Inc., and Case IPR2017-00710,
`filed by Huawei Device Co., Ltd., have been joined with this proceeding.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s
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`JOINT REQUEST IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
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`authorization of November 28, 2017, Petitioner LG Electronics, Inc. and Patent
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`Owner Papst Licensing GmbH & Co. KG jointly request to treat as business
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`confidential information the true and complete copy of the Settlement Agreement
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`(Confidential Exhibit 2013) between the parties, as referenced in the parties’ Joint
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`Motion to Terminate with Respect to LG Electronics, Inc. Pursuant to 35 U.S.C. §
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`317 and 37 C.F.R. § 42.74, filed concurrently herewith.
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`35 U.S.C. § 317(b) provides that:
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`At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential information,
`shall be kept separate from the file of the involved patents, and shall
`be made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause.
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`Likewise, 37 C.F.R. § 42.74(c) provides that:
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`A party to a settlement may request that the settlement be treated as
`business confidential information and be kept separate from the files
`of an involved patent or application. The request must be filed with
`the settlement. If a timely request is filed, the settlement shall only be
`available:
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`(1) To a Government agency on written request to the Board; or
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`JOINT REQUEST IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
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`(2) To any other person upon written request to the Board to make the
`settlement agreement available, along with the fee specified in §
`42.15(d) and on a showing of good cause.
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`The present request, which is being filed contemporaneously with the
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`Settlement Agreement, is timely and in accordance with the foregoing authority.
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`Therefore, parties request that the Settlement Agreement (Confidential Exhibit
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`2013) (i) be treated as business confidential information, (ii) be maintained
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`separate from the publicly available file of the involved patent, and (iii) shall be
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`made available only to Federal Government agencies on written request, or to
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`persons showing good cause on written request, pursuant to 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c).
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`Dated: November 28, 2017
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`Respectfully submitted,
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`/Nicholas T. Peters/
`Nicholas T. Peters
`Registration No. 53,456
`Lead Counsel for Patent Owner
`ntpete@fitcheven.com
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`/Herbert H. Finn /
`Herbert H. Finn
`Registration No. 38,139
`Jonathan E. Giroux
`Registration No. 66,639
`GREENBERG TRAURIG, LLP
`77 W. Wacker Dr., Suite 3100
`Chicago, IL 60601
`(202) 662-6000
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`Attorneys for Petitioner LG Electronics, Inc.
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`JOINT REQUEST IN IPR2016-01211
`U.S. PATENT NO. 8,504,746
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on November
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`28, 2017, a complete and entire copy of the foregoing paper has been served in its
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`entirety by e-mail on the following addresses of record for Petitioner:
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`PapstPTABPetitioners@Jonesday.com
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`LG-Papst-IPR@gtlaw.com
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`finnh@gtlaw.com
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`girouxj@gtlaw.com
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`Dated: November 28, 2017
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`By:
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`/Nicholas T. Peters/
`Nicholas T. Peters
`Registration No. 53,456
`Lead Counsel for Patent Owner
`ntpete@fitcheven.com
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