Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 40
`Filed: November 9, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`TCL INDUSTRIES HOLDINGS CO., HISENSE CO., LTD.,
`and LG ELECTRONICS INC.
`
`Petitioners
`
`v.
`
`PARKERVISION, INC.
`
`Patent Owner
`
`_______________
`
`
`IPR2021-009851
`Patent No. 7,292,835 B2
`
`________________________________________________________
`
`JOINT MOTION TO TERMINATE HISENSE AS PETITIONER
`
`
`
`
`
`
`
`
` 1
`
` LG Electronics Inc. who filed a petition in IPR2022-00246, is joined as petitioner
`in this proceeding.
`
`
`571-272-7822
`
`
`
`
`Paper No. 40
`Filed: November 9, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`TCL INDUSTRIES HOLDINGS CO., HISENSE CO., LTD.,
`and LG ELECTRONICS INC.
`
`Petitioners
`
`v.
`
`PARKERVISION, INC.
`
`Patent Owner
`
`_______________
`
`
`IPR2021-009851
`Patent No. 7,292,835 B2
`
`________________________________________________________
`
`JOINT MOTION TO TERMINATE HISENSE AS PETITIONER
`
`
`
`
`
`
`
`
` 1
`
` LG Electronics Inc. who filed a petition in IPR2022-00246, is joined as petitioner
`in this proceeding.
`
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`Petitioner Hisense Co., Ltd. (“Hisense”) and Patent Owner ParkerVision, Inc.
`
`(“ParkerVision”) (collectively, the “Parties”) have reached a settlement as to all the
`
`disputes in this proceeding. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74,
`
`Hisense and ParkerVision jointly move to terminate the present inter partes review
`
`proceeding as to Hisense. This motion does not pertain to any other Petitioner.
`
`STATEMENT OF FACTS
`
`Hisense and ParkerVision have reached an agreement to resolve these
`
`Parties’ disputes at issue in this proceeding. The Patent License and Settlement
`
`Agreement settles this proceeding. Pursuant to 37 C.F.R. § 42.74(b), the Parties’
`
`Patent License and Settlement Agreement is in writing, and a true and correct copy
`
`is being filed as Exhibit 1023. The Patent License and Settlement Agreement is
`
`being filed electronically with access to “Board Only.” A “Joint Request to Treat
`
`Exhibit 1023 as Business Confidential Information” is being filed concurrently with
`
`this Joint Motion to Terminate to treat the Patent License and Settlement
`
`Agreement as business confidential information and to keep it separate from the
`
`files of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
`
`42.74(c).
`
`II. RELIEF REQUESTED
`
`Termination of this inter partes review as to Hisense is respectfully
`
`requested, and the Parties submit that such termination is justified. “There are
`
`
`
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`strong public policy reasons to favor settlement between the parties to a
`
`proceeding.” Consolidated Trial Practice Guide 86 (Nov. 2019).
`
`The Board should terminate this proceeding, as these Parties jointly request,
`
`for the following reasons:
`
`First, Hisense and ParkerVision have met the statutory requirement that they
`
`file a “joint request” to terminate before the Office “has decided the merits of the
`
`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review
`
`shall be terminated upon such joint request “unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” There are no
`
`other preconditions of 35 U.S.C. § 317(a). At the time of this paper, the Board has
`
`not “decided the merits of the proceeding.”
`
`Second, Hisense and ParkerVision have reached a settlement as to all the
`
`disputes between these Parties in this proceeding. A true copy of the Patent
`
`License and Settlement Agreement is filed concurrently herewith. See Confidential
`
`Exhibit 1023. Hisense and ParkerVision request that the Patent License and
`
`Settlement Agreement be treated as business confidential information and be kept
`
`separate from the files of this proceeding in accordance with 37 C.F.R. § 42.74(c).
`
`No other such agreements, written or oral, exist between or among these Parties
`
`relating to this proceeding. The Patent License and Settlement Agreement thus
`
`satisfies the requirements of 35 U.S.C. § 317(b).
`
`2
`
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`Third, termination of Hisense as Petitioner would save significant further
`
`expenditure of resources by these Parties. Termination as requested would also
`
`further the purpose of inter partes review proceedings to provide an efficient and
`
`less costly alternative forum for patent disputes. Further, denying the motion would
`
`discourage future settlements, as patent owners in similar situations would have a
`
`strong disincentive to settle if they perceived that a petitioner could continue
`
`regardless of a settlement.
`
`III. CONCLUSION
`
`
`
`For the foregoing reasons, Hisense and ParkerVision respectfully request
`
`termination of this inter partes review as to Hisense.
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`
`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
`
`Counsel for Petitioner Hisense Co.,
`Ltd.
`
`
`Respectfully submitted,
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`
`
`
`
`Dated: November 9, 2022
`
`
`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
`
`Attorneys for ParkerVision, Inc.
`
`4
`
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of this paper was served on November
`
`9, 2022, via electronic mail to counsel for Patent Owner and by filing on the
`
`Ron Daignault
`rdaignault@daignaultiyer.com
`Jason Charkow
`jcharkow@daignaultiyer.com
`Chandran Iyer
`cbiyer@daignaultiyer.com
`Stephanie Mandir
`smandir@daignaultiyer.com
`
`
`
`
`By: /s/ Edward J. Mayle
`Edward J. Mayle
`Reg. No. 65,444
`
`Counsel for Petitioner Hisense Co., Ltd.
`
`
`
`
`
`PTAB’s P-TACTS system:
`
`
`
`
`
`
`
`
`
`
`
`Dated: November 9, 2022
`
`
`
`
`
`
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