`571-272-7822
`
`Paper 17
`Entered: September19, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VIZIO, INC.,
`Petitioner,
`
`V.
`
`MAXELL, LTD.,
`Patent Owner.
`
`IPR2022-01459 (Patent 7,730,507 B2)
`IPR2022-01463 (Patent 7,760,213 B2)!
`
`Before KEVIN C. TROCK, JOHN A. HUDALLA,and
`JASON W. MELVIN,Administrative Patent Judges.
`
`MELVIN,Administrative Patent Judge.
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`' This Order addressesissuesthat are the samein eachof these proceedings.
`Weissue one Orderto be entered in each proceeding. Theparties are not
`authorizedto use this style caption unless later permitted.
`
`
`
`IPR2022-01459 (Patent 7,730,507 B2)
`IPR2022-01463 (Patent 7,760,213 B2)
`
`I. INTRODUCTION
`
`On September7, 2023, with the Board’s authorization, Petitioner and
`
`Patent Owner(collectively referred to as “the Parties”) filed a Jomt Motion
`
`to Terminate Inter Partes Review (“Joint Motion”) (Paper 157), as well as a
`
`Joint Motion to Keep Confidential and Separate (“Jomt Request”)
`
`(Paper 16), in each of the above-identified proceedings dueto settlement. In
`
`support of the Joint Requests, the Parties filed a copy of a Patent License
`
`Agreement (“Agreement”) (Ex. 1031) in each proceeding.
`
`Il. DISCUSSION
`
`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
`
`requestof the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for terminationis filed.”
`
`Section 35 U.S.C. § 317(a) also providesthat if no petitioner remainsin
`
`the interpartes review, the Office may terminate the review.
`
`In the Joint Motions, the Parties represent that they “have nowsettled
`
`their dispute and have reached agreement to terminate the Petition” in each
`
`proceeding, and that “neither Patent OwnernorPetitioner will be prejudiced
`
`by termination of” the proceedings. Paper 15, 2. The Parties further
`
`represent that the Agreementis “the entire agreement or understanding
`
`between the Parties made in connection with, or in contemplation of, the
`
`termination of” the proceedings, and thatit “is a true and accurate copy of
`
`the agreement betweenthe Parties that resolves” the proceedings. Id.
`
`> For expediency, wecite to papers in IPR2022-01459. Similar papers were
`filed in IPR2022-01463.
`
`
`
`IPR2022-01459 (Patent 7,730,507 B2)
`IPR2022-01463 (Patent 7,760,213 B2)
`
`Weinstituted trials in the above-identified proceedings on April 11,
`
`2023. Paper 7. Even though the proceedings have moved beyondthe
`
`preliminary stage, we have notyet decided the merits, and the Parties have
`
`adequately shownthat termination of the proceedings is appropriate. Under
`
`these circumstances, we determine that good cause exists to terminate the
`
`proceedings with respectto the Parties.
`
`In the Joint Requests, the Parties request to file the Agreement“as
`
`business confidential, and to have it be kept separate from thefile of the
`
`involved patent”in each proceeding, Paper 16, 1. After review, we find that
`
`the Agreementcontains business confidential information regarding the
`
`terms of settlement. We determinethat good causeexists to treat the
`
`Agreementas business confidential information pursuantto
`
`35 U.S.C. §$317(b) and 37 C.F.R. § 42.74(c).
`
`This Order does not constitute a final written decision pursuantto
`
`35 U.S.C. § 318(a).
`
`I. ORDER
`
`Accordingly, for the reasons discussed above,it is:
`
`ORDEREDthat the Joint Motions are granted, and IPR2022-01459
`
`and IPR2022-01463are terminated with respectto Petitioner and Patent
`
`Owner pursuant to 35 U.S.C. §317(a) and 37 C.F.R. § 42.72; and
`
`FURTHER ORDEREDthatthe Joint Requests are granted, and the
`
`Agreementshall be kept separate from the files of Patents 7,730,507 B2 and
`
`7,760,213 B2, and be made available only to Federal Governmentagencies
`
`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).
`
`
`
`IPR2022-01459 (Patent 7,730,507 B2)
`IPR2022-01463 (Patent 7,760,213 B2)
`
`FOR PETITIONER:
`
`Cono Carrano
`Brock Wilson
`Clark Gordon
`AKIN GUMP STRAUSS HAUER & FELD LLP
`ccarrano @akingump.com
`bfwilson @skingump.com
`cgordon@akingump.com
`
`FOR PATENT OWNER:
`
`Amanda Bonner
`Robert Pluta
`Luiz Miranda
`Saqib Siddiqui
`Seth Bruneel
`
`MAYER BROWN LLP
`astreff@mayerbrown.com
`rpluta@mayerbrown.com
`Imiranda@mayerbrown.com
`ssiddiqui@mayerbrown.com
`sbrunee]!@mayerbrown.com
`
`
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