`571-272-7822
`
`
`
`
`Paper No. 36
`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
`
`_______________
`
`
`Case No. IPR2021-009901
`Patent No. 7,110,444
`
`________________________________________________________
`
`JOINT REQUEST TO TREAT EXHIBIT 1025 AS BUSINESS
`CONFIDENTIAL INFORMATION
`
`
`
`
`
`
` 1
`
` LG Electronics Inc. who filed a petition in IPR2022-00245, is joined as petitioner
`in this proceeding.
`
`
`
`
`
`IPR2021-00990
`Patent 7,110,444
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, 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 and jointly move to terminate the above-captioned proceeding as
`
`to Hisense. As permitted by statute, Hisense and ParkerVision request that the
`
`Board treat as business confidential information the true and complete copy of
`
`the Patent License and Settlement Agreement (Confidential Exhibit 1025)
`
`between the Parties, as referenced in the Parties’ Joint Motion to Terminate
`
`Hisense as Petitioner, 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
`
`
`
`
`
`IPR2021-00990
`Patent 7,110,444
`
`application. The request must be filed with 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 Patent
`
`License and Settlement Agreement, is timely and in accordance with the foregoing
`
`authority. Therefore, these Parties request that the Patent License and Settlement
`
`Agreement (Confidential Exhibit 1025) (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
`
`
`
`
`
`
`
`
`
`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,
`
`
`IPR2021-00990
`Patent 7,110,444
`
`
`
`
`
`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.
`
`3
`
`
`
`IPR2021-00990
`Patent 7,110,444
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of this paper and Exhibit 1025 were
`
`served on November 9, 2022, via electronic mail to counsel for Patent Owner and
`
`by filing on the PTAB’s P-TACTS system:
`
`
`
`
`
`
`
`
`
`
`
`Dated: November 9, 2022
`
`
`
`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.
`
`3
`
`
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