Paper No. 10
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`TCL INDUSTRIES HOLDINGS CO., LTD., HISENSE CO., LTD., AND ZYXEL
`COMMUNICATIONS CORP.
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`Petitioners
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`v.
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`PARKERVISION, INC.
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`Patent Owner
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`_______________
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`Case No. IPR2021-00985
`Patent No. 7,292,835
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`________________________________________________________
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`JOINT MOTION TO TERMINATE PROCEEDING AS TO
`PETITIONER ZYXEL COMMUNICATIONS CORP.
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`TCL INDUSTRIES HOLDINGS CO., LTD., HISENSE CO., LTD., AND ZYXEL
`COMMUNICATIONS CORP.
`
`Petitioners
`
`v.
`
`PARKERVISION, INC.
`
`Patent Owner
`
`_______________
`
`
`Case No. IPR2021-00985
`Patent No. 7,292,835
`
`________________________________________________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING AS TO
`PETITIONER ZYXEL COMMUNICATIONS CORP.
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`Petitioner ZyXEL Communications Corp. (“ZyXEL Corp.” or “Petitioner”)
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`IPR2021-00985
`Paper No. 10
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`and Patent Owner ParkerVision, Inc. (“ParkerVision”) have reached a settlement.
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner ZyXEL Corp. and
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`Patent Owner ParkerVision jointly move to terminate the present inter partes
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`review proceeding with respect to Petitioner ZyXEL Corp.
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`I. Statement of Facts
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`ZyXEL Corp. and ParkerVision have reached an agreement to resolve the
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`Parties’ disputes. The settlement agreement settles (i) this proceeding and (ii) the
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`related district court litigation styled ParkerVision, Inc. v. ZyXEL Communications
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`Corporation, No. 6:20-cv-01010 (W.D. Tex.). Pursuant to 37 C.F.R. § 42.74(b),
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`the Parties’ settlement agreement is in writing, and a true and correct copy is being
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`filed as Exhibit 2010. The settlement agreement is being filed electronically with
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`access to “Board Only.” A “Joint Request to File Settlement Agreement as
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`Business Confidential Information Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §
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`42.74” is being filed concurrently with this Joint Motion to Terminate to treat the
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`settlement agreement as business confidential information and to keep it separate
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`from the files of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c).
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`- 1 -
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`II. Relief Requested
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`IPR2021-00985
`Paper No. 10
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`Termination of this inter partes review as to Petitioner ZyXEL Corp. is
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`respectfully requested, and the Parties submit that such termination is justified.
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`“There are strong public policy reasons to favor settlement between the parties to a
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`proceeding.” Consolidated Trial Practice Guide 86 (Nov. 2019). “The Board
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`expects that a proceeding will terminate after the filing of a settlement agreement,
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`unless the Board has already decided the merits of the proceeding.” Id. (citing 35
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`U.S.C. §§317(a)).
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`The Board should terminate this proceeding as to Petitioner ZyXEL Corp.,
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`as the Parties jointly request, for the following reasons:
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`First, ZyXEL Corp. and ParkerVision have met the statutory requirement
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`that they file a “joint request” to terminate before the Office “has decided the
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`merits of the proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter
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`partes review shall be terminated upon such joint request “unless the Office has
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`decided the merits of the proceeding before the request for termination is filed.”
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`There are no other preconditions of 35 U.S.C. § 317(a). At the time of this paper,
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`the Board has not issued its decision on whether to institute trial.
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`Second, ZyXEL Corp. and ParkerVision have reached a settlement as to all
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`the disputes in this proceeding and as to U.S. Patent No. 7,292,835. A true copy of
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`the settlement agreement is filed concurrently herewith. See Confidential Exhibit
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`2010. ZyXEL Corp. and Patent Owner request that the settlement agreement be
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`IPR2021-00985
`Paper No. 10
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`treated as business confidential information and be kept separate from the files of
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`this proceeding in accordance with 37 C.F.R. § 42.74(c). No other such
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`agreements, written or oral, exist between or among the Parties.
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`Third, termination would save significant further expenditure of resources
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`by the Parties. Termination upon settlement as requested would also further the
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`purpose of inter partes review proceedings to provide an efficient and less costly
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`alternative forum for patent disputes. Further, maintaining the proceeding as to
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`Petitioner ZyXEL Corp. would discourage further settlements, as patent owners in
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`similar situations would have a strong disincentive to settle if they perceived that
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`an inter partes review would continue regardless of a settlement.
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`III. Conclusion
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`For the foregoing reasons, ZyXEL Corp. and ParkerVision respectfully
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`request termination of this inter partes review with respect to Petitioner ZyXEL
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`Corp. only. The IPR petition will remain in force with respect to the non-ZyXel
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`Corp. petitioners, who continue to be represented by currently designated counsel.
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`Dated: September 27, 2021
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`Respectfully submitted,
`By: /Chandran B. Iyer/
`Jason S. Charkow
`(USPTO Reg. No. 46,418)
`Chandran B. Iyer
`(USPTO Reg. No. 48,434)
`Stephanie R. Mandir
`(USPTO Reg. No. 72,930)
`jcharkow@daignaultiyer.com
`cbiyer@daignaultiyer.com
`smandir@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive
`Suite 150
`Vienna, VA 22182
`
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`Attorneys for ParkerVision, Inc.
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`IPR2021-00985
`Paper No. 10
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`Respectfully submitted,
`By:
`/Victoria Hao/
`Victoria Hao
`Reg. No. 47,630
`vhao@sjclawpc.com
`Martha Hopkins
`Reg. No. 46,277
`mhopkins@sjclawpc.com
`
`USPTO Customer No. 98,920
`Law Offices of S.J. Christine Yang
`17220 Newhope Street, Suites 101-
`102
`Fountain Valley, CA 92708
`
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`Counsel for Petitioner ZyXEL Corp.
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing JOINT MOTION
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`IPR2021-00985
`Paper No. 10
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`TO TERMINATE PROCEEDING AS TO PETITIONER ZYXEL
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`COMMUNICATIONS CORP. was provided on September 27, 2021, to the
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`following counsel of record for the Patent Owner via electronic mail:
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`Jason S. Charkow
`Chandran B. Iyer
`Stephanie R. Mandir
`jcharkow@daignaultiyer.com cbiyer@daignaultiyer.com
`smandir@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive
`Suite 150
`Vienna, VA 22182
`
`
`By: /Victoria Hao/
`
`
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