Petitioner, LG Electronics, Inc. (“LG”), and Patent Owner, Papst Licensing GmbH & Co. KG (“Papst”), jointly move to terminate the instant inter partes review with respect to LG in light of the settlement between LG and Papst that resolves their dispute regarding U.S. Patent No. 6,895,449 B2 (“the ’449 patent”).
LG and Papst also filed a true copy of their written settlement agreement in connection with the termination as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
Notably, 35 U.S.C. § 317(a), in part, provides the following (emphasis added): (a) IN GENERAL.—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.
Here, although the instant inter partes review has been instituted, we have not entered a final written decision in this proceeding.
In consideration of the foregoing, it is hereby: ORDERED that the Joint Motion to Terminate, with respect to LG, is granted; FURTHER ORDERED that this review is terminated with respect to LG only; but this review continues to proceed with respect to Papst and the remaining Petitioners; FURTHER ORDERED that the Joint Request to File Settlement Agreement as Business Confidential Information and to keep such settlement agreement separate from the patent file, and to make it 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), is granted; and FURTHER ORDERED that any subsequent papers filed in this inter partes review should not include LG in the caption.