Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 52
`Entered: February 15, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`META PLATFORMS, INC.,
`Petitioner,
`v.
`THALES VISIONIX, INC.,
`Patent Owner.
`_______________
`
`IPR2022-01294 (Patent 8,224,024 B2)
`IPR2022-01304 (Patent 6,922,632 B2)
`IPR2022-01305 (Patent 6,922,632 B2)
`IPR2022-01308 (Patent 7,725,253 B2)
`_______________
`
`
`Before WILLIAM V. SAINDON, HYUN J. JUNG, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 52
`Entered: February 15, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`META PLATFORMS, INC.,
`Petitioner,
`v.
`THALES VISIONIX, INC.,
`Patent Owner.
`_______________
`
`IPR2022-01294 (Patent 8,224,024 B2)
`IPR2022-01304 (Patent 6,922,632 B2)
`IPR2022-01305 (Patent 6,922,632 B2)
`IPR2022-01308 (Patent 7,725,253 B2)
`_______________
`
`
`Before WILLIAM V. SAINDON, HYUN J. JUNG, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`IPR2022-01294 (Patent 8,224,024 B2)
`IPR2022-01304 (Patent 6,922,632 B2)
`IPR2022-01305 (Patent 6,922,632 B2)
`IPR2022-01308 (Patent 7,725,253 B2)
`
`Petitioner (Meta Platforms, Inc.) and Patent Owner (Thales Visionix,
`
`Inc.) have indicated that they have reached an agreement to settle each of the
`above-identified inter partes review proceedings. The Board authorized
`Petitioner and Patent Owner (collectively referred to as “the parties”) to file
`joint motions to terminate the proceedings on January 16, 2024.
`
`On January 17, 2024, pursuant to 37 C.F.R. § 42.74 and
`35 U.S.C. § 317(a), the parties filed joint motions to terminate each of the
`above-identified proceedings (Paper 441) and joint requests (Paper 432) to
`treat a confidential Patent License and Settlement Agreement as business
`confidential information and to keep the Patent License and Settlement
`Agreement separate from the files of the involved patents, along with a copy
`of the confidential Patent License and Settlement Agreement (Ex. 10423 (the
`“Meta-Gentex4 Agreement”)). Because the parties’ joint motions and joint
`requests did not appear to discharge the parties’ obligations under
`35 U.S.C. § 317(b), 5 the Board requested the parties, on January 26, 2024, to
`
`
`1 For purposes of expediency, we cite to Papers filed in IPR2022-01294.
`The parties submitted similar Joint Motions in IPR2022-01304 (Paper 49),
`IPR2022-01305 (Paper 50), and IPR2022-01308 (Paper 48).
`2 The parties submitted similar Joint Requests regarding the Patent License
`and Settlement Agreement in IPR2022-01304 (Paper 48), IPR2022-01305
`(Paper 49), and IPR2022-01308 (Paper 47).
`3 We cite to Exhibits filed in IPR2022-01294. The parties also submitted
`copies of confidential Patent License and Settlement Agreement in IPR2022-
`01304 (Ex. 1042), IPR2022-01305 (Exhibit 1042), and IPR2022-01308
`(Exhibit 1042).
`4 Gentex Corporation (“Gentex”) is Patent Owner’s licensee and real party-
`in-interest. See Paper 44, 1.
`5 In particular, the joint motions and joint requests (Papers 43 and 44) did
`
` 2
`
`
`
`
`
`
`
`IPR2022-01294 (Patent 8,224,024 B2)
`IPR2022-01304 (Patent 6,922,632 B2)
`IPR2022-01305 (Patent 6,922,632 B2)
`IPR2022-01308 (Patent 7,725,253 B2)
`
`re-file the motions and requests in order to make clear that the parties’
`submissions discharge their obligations under 35 U.S.C. § 317(b). See
`generally DTN, LLC v. Farms Technology, LLC, IPR2018-01412, Paper 21
`(PTAB June 14, 2019) (precedential) (explaining the requirements of
`35 U.S.C. § 317(b)).
`On February 5, 2024, the parties re-filed updated joint motions to
`terminate each of the above-identified proceedings (collectively “Joint
`Motions”) (Paper 466) and joint requests (collectively “Joint Requests”)
`(Paper 457) to treat the previously-filed Meta-Gentex Agreement (Ex. 1042)
`as business confidential information and to keep the Meta-Gentex
`Agreement separate from the files of the involved patents. The parties
`describe the filed copy of the confidential Meta-Gentex Agreement as
`comprising “a true copy of any ‘agreement or understanding … including
`any collateral agreements … made in connection with, or in contemplation
`of, the termination of’ th[ese] inter partes review[s].” Paper 46, 1–2; see
`also Paper 45, 1. The parties represent that the Meta-Gentex Agreement
`
`
`not certify that the filed Meta-Gentex Agreement is a “true copy” of the
`agreement, and also did not certify that there are no other collateral
`agreements or understandings made in connection with, or in contemplation
`of, the termination sought. See 35 U.S.C. § 317(b).
`6 The parties submitted similar Joint Motions in IPR2022-01304 (Paper 51),
`IPR2022-01305 (Paper 52), and IPR2022-01308 (Paper 50).
`7 The parties submitted similar Joint Requests regarding the Patent License
`and Settlement Agreement in IPR2022-01304 (Paper 50), IPR2022-01305
`(Paper 51), and IPR2022-01308 (Paper 49).
`
` 3
`
`
`
`
`
`
`
`IPR2022-01294 (Patent 8,224,024 B2)
`IPR2022-01304 (Patent 6,922,632 B2)
`IPR2022-01305 (Patent 6,922,632 B2)
`IPR2022-01308 (Patent 7,725,253 B2)
`
`resolves each of the above-identified proceedings as well as the related
`district court litigation.8 Paper 46, 2–4.
`Under 35 U.S.C. § 317(a), “[a]n 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.”
`Section 35 U.S.C. § 317(a) also provides that if no petitioner remains in the
`inter partes review, the Office may terminate the review. The above-
`identified proceedings are at an intermediate stage. We have not yet decided
`the merits of these proceedings, and final written decisions have not been
`entered in these proceedings. Terminating these proceedings will save the
`Board administrative and judicial resources, e.g., in preparing and issuing a
`final written decision to decide the patentability issues raised in the
`respective Petitions. Furthermore, there are strong public policy reasons to
`favor settlement between the parties to a proceeding. Patent Trial and
`Appeal Board Consolidated Trial Practice Guide, 84 Fed. Reg. 64,280
`(Nov. 21, 2019). Under these circumstances, and in view of the parties’
`
`
`8 The parties identify the related district court litigation as Gentex
`Corporation et al. v. Meta Platforms, Inc. et al., No. 6:21-cv-00755-ADA
`(W.D. Tex.) (transferred to the Northern District of California as Case No.
`4:22-cv-03892-YGR). See Paper 46, 2–3. The parties note that Gentex and
`Indigo Technologies, LLC are “Voluntary Plaintiffs” in the district court
`litigation, with Patent Owner named as an involuntary plaintiff in the
`litigation, and submit that “the Voluntary Plaintiffs and Petitioner have filed
`a joint motion to dismiss the district court litigation.” Id.
`
` 4
`
`
`
`
`
`
`
`IPR2022-01294 (Patent 8,224,024 B2)
`IPR2022-01304 (Patent 6,922,632 B2)
`IPR2022-01305 (Patent 6,922,632 B2)
`IPR2022-01308 (Patent 7,725,253 B2)
`
`settlement and representations, we determine that good cause exists to
`terminate these proceedings. Accordingly, we grant the Joint Motions.
`The parties also “jointly request to file and treat the Patent License
`And Settlement Agreement between Petitioner and real party-in-interest
`Gentex Corporation (the ‘Meta-Gentex Agreement,’ Exhibit 1042) as
`business confidential information” and “jointly request that the confidential
`Meta-Gentex Agreement be kept separate from the file[s] of the subject
`patent[s] in the above-captioned proceeding[s] and be made available only to
`federal government agencies on written request or to persons showing good
`cause.” Paper 45, 1. We have reviewed the Meta-Gentex Agreement, which
`contains confidential business information regarding the terms of settlement,
`and we determine that good cause exists to treat the Meta-Gentex Agreement
`as business confidential information and to keep it separate from the files of
`the respective patents involved in the above-identified proceedings pursuant
`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Accordingly, we grant the
`Joint Requests.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is:
`ORDERED that the Joint Motions (IPR2022-01294, Paper 46;
`IPR2022-01304, Paper 51; IPR2022-01305, Paper 52; and IPR2022-01308,
`Paper 50) to terminate the above-identified proceedings are granted, and that
`IPR2022-01294, IPR2022-01304, IPR2022-01305, and IPR2022-01308 are
`terminated;
`
` 5
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`
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`
`
`
`
`IPR2022-01294 (Patent 8,224,024 B2)
`IPR2022-01304 (Patent 6,922,632 B2)
`IPR2022-01305 (Patent 6,922,632 B2)
`IPR2022-01308 (Patent 7,725,253 B2)
`
`
`FURTHER ORDERED that the Joint Requests (IPR2022-01294,
`Paper 45; IPR2022-01304, Paper 50; IPR2022-01305, Paper 51; and
`IPR2022-01308, Paper 49) are granted, and the Meta-Gentex Agreement
`(IPR2022-01294, Ex. 1042; IPR2022-01304, Ex. 1042; IPR2022-01305,
`Ex. 1042; and IPR2022-01308, Ex. 1042) shall be treated as business
`confidential information, shall be kept separate from the files of the involved
`patents (U.S. Patent 8,224,024, U.S. Patent 6,922,632, and U.S. Patent
`7,725,253), and shall be made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause on
`written request, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
`and
`
`FURTHER ORDERED that Exhibit 1042 in IPR2022-01294,
`Exhibit 1042 in IPR2022-01304, Exhibit 1042 in IPR2022-01305, and
`Exhibit 1042 in IPR2022-01308 shall remain designated as “Board Only” in
`the Board’s P-TACTS system.
`
`
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` 6
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`
`
`
`
`
`
`
`
`IPR2022-01294 (Patent 8,224,024 B2)
`IPR2022-01304 (Patent 6,922,632 B2)
`IPR2022-01305 (Patent 6,922,632 B2)
`IPR2022-01308 (Patent 7,725,253 B2)
`
`FOR PETITIONER:
`
`W. Todd Baker
`Yimeng Dou
`Ellisen Shelton Turner
`Akshay S. Deoras
`KIRKLAND & ELLIS LLP
`todd.baker@kirkland.com
`yimeng.dou@kirkland.com
`ellisen.turner@kirkland.com
`akshay.deoras@kirkland.com
`
`
`FOR PATENT OWNER:
`
`Meredith Martin Addy
`Robert P. Hart
`Gregory B. Gulliver
`Brandon C. Helms
`ADDYHART P.C.
`meredith@addyhart.com
`robert@addyhart.com
`gbgulliver@addyhart.com
`bhelms@addyhart.com
`
`D. Shayon Ghosh
`Arthur J. Argall III
`Melissa B. Collins
`Adam D. Harber
`David M. Krinksy
`WILLIAMS & CONNOLLY LLP
`sghosh@wc.com
`aargall@wc.com
`mcollins@wc.com
`aharber@wc.com
`Gentex-IPR@wc.com
`
` 7
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