`571-272-7822
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`Paper No. 41
`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
`
`_______________
`
`
`IPR2021-009851
`Patent No. 7,292,835 B2
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`________________________________________________________
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`JOINT REQUEST TO TREAT EXHIBIT 1023 AS BUSINESS
`CONFIDENTIAL INFORMATION
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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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`
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`IPR2021-00985
`Patent 7,292,835 B2
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Hisense
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`Co., Ltd. (“Hisense”) and Patent Owner ParkerVision, Inc. (“ParkerVision”)
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`(collectively, the “Parties”) have reached a settlement as to all the disputes in
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`this proceeding and jointly move to terminate the above-captioned proceeding as
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`to Hisense. As permitted by statute, Hisense and ParkerVision request that the
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`Board treat as business confidential information the true and complete copy of
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`the Patent License and Settlement Agreement (Confidential Exhibit 1023)
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`between the Parties, as referenced in the Parties’ Joint Motion to Terminate
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`Hisense as Petitioner, filed concurrently herewith.
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`35 U.S.C. § 317(b) provides that:
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`At the request of a party to the proceeding, the agreement
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`or understanding shall be treated as business confidential
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`information, shall be kept separate from the file of the
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`involved patents, and shall be made available only to
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`Federal Government agencies on written request, or to
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`any person on a showing of good cause.
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`Likewise, 37 C.F.R. § 42.74(c) provides that:
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`A party to a settlement may request that the settlement be
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`treated as business confidential information and be kept
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`separate from the files of an involved patent or
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`
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`
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`IPR2021-00985
`Patent 7,292,835 B2
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`application. The request must be filed with the
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`settlement. If a timely request is filed, the settlement shall
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`only be available:
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`(1) To a Government agency on written request to the
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`Board; or
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`(2) To any other person upon written request to the
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`Board to make the settlement agreement available, along
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`with the fee specified in § 42.15(d) and on a showing of
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`good cause.
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`The present request, which is being filed contemporaneously with the Patent
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`License and Settlement Agreement, is timely and in accordance with the foregoing
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`authority. Therefore, these Parties request that the Patent License and Settlement
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`Agreement (Confidential Exhibit 1023) (i) be treated as business confidential
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`information, (ii) be maintained separate from the publicly available file of the
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`involved patent, and (iii) shall be made available only to Federal Government
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`agencies on written request, or to persons showing good cause on written request,
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`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`2
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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
`
`Counsel for Petitioner Hisense Co.,
`Ltd.
`
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`Respectfully submitted,
`
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`
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`
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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
`
`Attorneys for ParkerVision, Inc.
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`3
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`IPR2021-00985
`Patent 7,292,835 B2
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of this paper and Exhibit 1023 were
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`served on November 9, 2022, via electronic mail to counsel for Patent Owner and
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`by filing on the PTAB’s P-TACTS system:
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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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`Dated: November 9, 2022
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