`
`
`
`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 REQUEST TO TREAT SETTLEMENT AGREEMENT AS
`BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner ZyXEL
`
`IPR2021-00985
`Paper No. 11
`
`
`
`Communications Corp. (“ZyXEL Corp.” or “Petitioner”) and Patent Owner
`
`ParkerVision, Inc. (“ParkerVision”) (collectively, the “Parties”) have reached a
`
`settlement and jointly move to terminate the above-captioned proceeding as to
`
`ZyXEL Corp. As permitted by statute, ZyXEL Corp. and ParkerVision request
`
`that the Board treat as business confidential information the true and complete
`
`copy of the Settlement Agreement (Confidential Exhibit 2010) between the parties,
`
`as referenced in the parties’ Joint Motion to Terminate Pursuant to 35 U.S.C. § 317
`
`and 37 C.F.R. § 42.74, filed concurrently herewith.
`
`35 U.S.C. § 317(b) provides that:
`
`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.
`
`Likewise, 37 C.F.R. § 42.74(c) provides that:
`
`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
`
`
`
`- 1 -
`
`
`
`
`
`IPR2021-00985
`Paper No. 11
`
`the settlement. If a timely request is filed, the settlement shall only be
`
`available:
`
`(1) To a Government agency on written request to the Board; or
`
`(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.
`
`The present request, which is being filed contemporaneously with the
`
`Settlement Agreement, is timely and in accordance with the foregoing authority.
`
`Therefore, the parties request that the Settlement Agreement (Confidential Exhibit
`
`2010) (i) be treated as business confidential information, (ii) be maintained
`
`separate from the publicly available file of the involved patent, and (iii) shall be
`
`made available only to Federal Government agencies on written request, or to
`
`persons showing good cause on written request, pursuant to 35 U.S.C. § 317(b) and
`
`37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`- 2 -
`
`
`
`
`Dated: September 27, 2021
`
`IPR2021-00985
`Paper No. 11
`
`
`
`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
`
`
`Attorneys for ParkerVision, Inc.
`
`
`
`
`
`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
`
`
`Counsel for Petitioner ZyXEL Corp.
`
`
`
`
`
`
`
`- 3 -
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing JOINT REQUEST
`
`IPR2021-00985
`Paper No. 11
`
`
`
`
`
`TO TREAT SETTLEMENT AGREEMENT AS BUSINESS
`
`CONFIDENTIAL INFORMATION was provided on September 27, 2021, to the
`
`following counsel of record for the Patent Owner via electronic mail:
`
`
`
`
`
`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/
`
`
`
`- 4 -
`
`