`571-272-7822
`
`
`
`
`
` Paper 38
`Date: November 16, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TCL INDUSTRIES HOLDINGS CO., LTD., HISENSE CO., LTD., and
`LG ELECTRONICS INC.,
`Petitioners,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-009901
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`Only as to Hisense Co., Ltd.
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`1 LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as
`petitioner in this proceeding.
`
`
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`I.
`DISCUSSION
`Petitioner Hisense Co., Ltd. (“Hisense”) and Patent Owner
`ParkerVision, Inc. (“ParkerVision”) filed (1) a Joint Motion to Terminate
`Hisense as Petitioner (Paper 35 (“Mot.”)) based on a settlement agreement
`between those entities, (2) a true copy of their written settlement agreement
`(Ex. 1025), and (3) a Joint Request to Treat Exhibit 1025 as Business
`Confidential Information (Paper 36). Hisense and ParkerVision indicate that
`they have settled all the disputes in this proceeding and jointly move to
`terminate the proceeding as to Hisense. 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. 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.
`§ 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, the merits of the proceeding have not yet
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`been decided. Accordingly, we are persuaded that, under these
`circumstances, termination of this proceeding only as to Hisense is
`appropriate.
`Additionally, we grant the Joint Request to Treat Exhibit 1025 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 Hisense as Petitioner
`(Paper 35) is granted;
`FURTHER ORDERED that the Joint Request to Treat Exhibit 1025
`as Business Confidential Information (Paper 36) is granted;
`FURTHER ORDERED that the settlement agreement (Ex. 1025) 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);
`
`3
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`FURTHER ORDERED that this proceeding is terminated only as to
`Petitioner Hisense; and
`FURTHER ORDERED that Petitioners TCL Industries Holdings Co.,
`Ltd. and LG Electronics Inc. remain parties in this proceeding.
`
`
`
`
`4
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`For PETITIONERS TCL Industries Holdings Co., Ltd. and Hisense Co.,
`Ltd.:
`
`Kristopher L. Reed
`Edward J. Mayle
`Matias Ferrario
`KILPATRICK TOWNSEND & STOCKTON LLP
`kreed@kilpatricktownsend.com
`tmayle@kilpatricktownsend.com
`mferrario@kilpatricktownsend.com
`
`
`For PETITIONER LG Electronics Inc.:
`
`Scott A. McKeown
`Steven Pepe
`Scott Taylor
`Matthew R. Shapiro
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`steven.pepe@ropesgray.com
`scott.taylor@ropesgray.com
`matthew.shapiro@ropesgray.com
`
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Chandran B. Iyer
`Stephanie R. Mandir
`DAIGNAULT IYER LLP
`jcharkow@daignaultiyer.com
`cbiyer@daignaultiyer.com
`smandir@daignaultiyer.com
`
`
`5
`
`
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