Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 13
`Date: October 7, 2021
`
`
`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.,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-00985
`Patent 7,292,835 B2
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`Only as to ZyXEL Communications Corp.
`37 C.F.R. § 42.74
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 13
`Date: October 7, 2021
`
`
`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.,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-00985
`Patent 7,292,835 B2
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`Only as to ZyXEL Communications Corp.
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`DISCUSSION
`I.
`Petitioner ZyXEL Communications Corp. (“ZyXEL”) and Patent
`Owner ParkerVision, Inc. (“ParkerVision”) filed (1) a Joint Motion to
`Terminate Proceeding as to Petitioner ZyXEL Communications Corp.
`(Paper 10 (“Mot.”)) based on a settlement agreement between those entities,
`(2) a true copy of their written settlement agreement (Ex. 2010), and (3) a
`Joint Request to Treat Settlement Agreement as Business Confidential
`Information (Paper 11). 1 ZyXEL and ParkerVision indicate that they have
`settled their underlying dispute and have agreed to terminate this proceeding
`only with respect to ZyXEL. Mot. 1. The parties filed what they represent
`is a true and correct copy of their written settlement agreement and indicate
`that it resolves this proceeding as well as related district court litigation. Id.
`Generally, the Board expects that a proceeding will terminate with
`respect to a petitioner after the filing of a settlement agreement.
`See 35 U.S.C. § 317(a) (“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.”); 37 C.F.R.
`
`
`1 Section 42.20(b) of Title 37 of the United States Code of Federal
`Regulations, which refers to “[p]rior authorization,” specifies that “[a]
`motion will not be entered without Board authorization. Authorization may
`be provided in an order of general applicability or during the proceeding.”
`37 C.F.R. § 42.20(b) (2020). Joint motions to terminate as to a petitioner
`generally require prior authorization. Although neither party sought
`authorization, we sua sponte waive that requirement in this particular
`instance pursuant to our authority under 37 C.F.R. § 42.5(b). In the future,
`any motion not expressly authorized by an order of general applicability or
`during this proceeding may be rejected.
`
`2
`
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`§ 42.72 (“The Board may terminate a trial without rendering a final written
`decision, where appropriate, including . . . pursuant to a joint request under
`35 U.S.C. 317(a) . . . .”); see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide at 86 (Nov. 2019)2 (“The Board expects
`that a proceeding will terminate after the filing of a settlement agreement,
`unless the Board has already decided the merits of the proceeding.” (citing
`35 U.S.C. §§ 317(a), 327)). Here, a trial has not yet been instituted and the
`merits of the proceeding not yet decided. Accordingly, we are persuaded
`that, under these circumstances, termination of this proceeding only as to
`ZyXEL is appropriate.
`Additionally, we grant the Joint Request to Treat Settlement
`Agreement as Business Confidential Information. See 35 U.S.C. § 317(b)
`(“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.”); see also 37 C.F.R. § 42.74(c) (same).
`This Decision does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate Proceeding as to
`Petitioner ZyXEL Communications Corp. (Paper 10) is granted;
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`
`
`FURTHER ORDERED that the Joint Request to Treat Settlement
`Agreement as Business Confidential Information (Paper 11) is granted;
`FURTHER ORDERED that the settlement agreement (Ex. 2010) be
`treated as business confidential information, kept separate from the file of
`the above-referenced patent, and 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);
`FURTHER ORDERED that this proceeding is terminated only as to
`Petitioner ZyXEL Communications Corp; and
`FURTHER ORDERED that Petitioner TCL Industries Holdings Co.,
`Ltd. and Hisense Co., Ltd. remain parties in this proceeding.
`
`
`
`
`
`4
`
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`For PETITIONER:
`
`Kristopher L. Reed
`Edward J. Mayle
`Matias Ferrario
`KILPATRICK TOWNSEND & STOCKTON LLP
`kreed@kilpatricktownsend.com
`tmayle@kilpatricktownsend.com
`mferrario@kilpatricktownsend.com
`
`Martha Hopkins
`Victoria Hao
`LAW OFFICES OF S.J. CHRISTINE YANG
`mhopkins@sjclawpc.com
`vhao@sjclawpc.com
`
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Chandran B. Iyer
`Stephanie R. Mandir
`DAIGNAULT IYER LLP
`jcharkow@daignaultiyer.com
`ciyer@daignaultiyer.com
`smandir@daignaultiyer.com
`
`
`
`
`
`5
`
`
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