`571-272-7822
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`Paper No. 40
`Filed: November 9, 2022
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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., HISENSE CO., LTD.,
`and LG ELECTRONICS INC.
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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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`IPR2021-009851
`Patent No. 7,292,835 B2
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`________________________________________________________
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`JOINT MOTION TO TERMINATE HISENSE AS PETITIONER
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` 1
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` LG Electronics Inc. who filed a petition in IPR2022-00246, is joined as petitioner
`in this proceeding.
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`IPR2021-00985
`Patent 7,292,835 B2
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`Petitioner Hisense Co., Ltd. (“Hisense”) and Patent Owner ParkerVision, Inc.
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`(“ParkerVision”) (collectively, the “Parties”) have reached a settlement as to all the
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`disputes in this proceeding. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74,
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`Hisense and ParkerVision jointly move to terminate the present inter partes review
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`proceeding as to Hisense. This motion does not pertain to any other Petitioner.
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`STATEMENT OF FACTS
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`Hisense and ParkerVision have reached an agreement to resolve these
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`Parties’ disputes at issue in this proceeding. The Patent License and Settlement
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`Agreement settles this proceeding. Pursuant to 37 C.F.R. § 42.74(b), the Parties’
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`Patent License and Settlement Agreement is in writing, and a true and correct copy
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`is being filed as Exhibit 1023. The Patent License and Settlement Agreement is
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`being filed electronically with access to “Board Only.” A “Joint Request to Treat
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`Exhibit 1023 as Business Confidential Information” is being filed concurrently with
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`this Joint Motion to Terminate to treat the Patent License and Settlement
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`Agreement as business confidential information and to keep it separate from the
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`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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`II. RELIEF REQUESTED
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`Termination of this inter partes review as to Hisense is respectfully
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`requested, and the Parties submit that such termination is justified. “There are
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`IPR2021-00985
`Patent 7,292,835 B2
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`strong public policy reasons to favor settlement between the parties to a
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`proceeding.” Consolidated Trial Practice Guide 86 (Nov. 2019).
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`The Board should terminate this proceeding, as these Parties jointly request,
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`for the following reasons:
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`First, Hisense and ParkerVision have met the statutory requirement that they
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`file a “joint request” to terminate before the Office “has decided the merits of the
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`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review
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`shall be terminated upon such joint request “unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.” There are no
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`other preconditions of 35 U.S.C. § 317(a). At the time of this paper, the Board has
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`not “decided the merits of the proceeding.”
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`Second, Hisense and ParkerVision have reached a settlement as to all the
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`disputes between these Parties in this proceeding. A true copy of the Patent
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`License and Settlement Agreement is filed concurrently herewith. See Confidential
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`Exhibit 1023. Hisense and ParkerVision request that the Patent License and
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`Settlement Agreement be treated as business confidential information and be kept
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`separate from the files of this proceeding in accordance with 37 C.F.R. § 42.74(c).
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`No other such agreements, written or oral, exist between or among these Parties
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`relating to this proceeding. The Patent License and Settlement Agreement thus
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`satisfies the requirements of 35 U.S.C. § 317(b).
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`2
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`IPR2021-00985
`Patent 7,292,835 B2
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`Third, termination of Hisense as Petitioner would save significant further
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`expenditure of resources by these Parties. Termination as requested would also
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`further the purpose of inter partes review proceedings to provide an efficient and
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`less costly alternative forum for patent disputes. Further, denying the motion would
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`discourage future settlements, as patent owners in similar situations would have a
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`strong disincentive to settle if they perceived that a petitioner could continue
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`regardless of a settlement.
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`III. CONCLUSION
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`For the foregoing reasons, Hisense and ParkerVision respectfully request
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`termination of this inter partes review as to Hisense.
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`3
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`By: /s/ Matias Ferrario
`Matias Ferrario
`Reg. No. 51,082
`mferrario@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Kristopher L. Reed
`Reg. No. 58,694
`kreed@kilpatricktownsend.com
`Edward J. Mayle
`Reg. No. 65,444
`tmayle@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1400 Wewatta St. Suite 600
`Denver, CO 80202
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`Counsel for Petitioner Hisense Co.,
`Ltd.
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`Respectfully submitted,
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`IPR2021-00985
`Patent 7,292,835 B2
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`Dated: November 9, 2022
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`By: /s/ Jason S. Charkow
`Jason S. Charkow
`Reg. No. 46,418*
`jcharkow@daignaultiyer.com
`Chandran B. Iyer
`Reg. No. 48,434
`cbiyer@daignaultiyer.com
`Stephanie R. Mandir
`Reg. No. 72,930
`smandir@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive
`Suite 150
`Vienna, VA 22182
`*Not admitted in Virginia
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`Attorneys for ParkerVision, Inc.
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`4
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`IPR2021-00985
`Patent 7,292,835 B2
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of this paper was served on November
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`9, 2022, via electronic mail to counsel for Patent Owner and by filing on the
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`Ron Daignault
`rdaignault@daignaultiyer.com
`Jason Charkow
`jcharkow@daignaultiyer.com
`Chandran Iyer
`cbiyer@daignaultiyer.com
`Stephanie Mandir
`smandir@daignaultiyer.com
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`By: /s/ Edward J. Mayle
`Edward J. Mayle
`Reg. No. 65,444
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`Counsel for Petitioner Hisense Co., Ltd.
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`PTAB’s P-TACTS system:
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`Dated: November 9, 2022
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