Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 15
`Entered: September 25, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`COMMSCOPE TECHNOLOGIES LLC,
`COMMSCOPE HOLDING COMPANY, INC.,
`Petitioner,
`v.
`BARKAN WIRELESS IP HOLDINGS, L.P.,
`Patent Owner.
`_______________
`
`IPR2020-00827 and -00831 (Patent 8,014,284 B2)
`IPR2020-00829, -00833, and -00835 (Patent 8,559,312 B2)
`IPR2020-00838 (Patent No. 9,392,638 B2)1
`_______________
`
`
`Before THU A. DANG, MEREDITH C. PETRAVICK,
`WILLIAM V. SAINDON, NATHAN A. ENGELS, and
`JOHN A. HUDALLA, Administrative Patent Judges.2
`
`ENGELS, Administrative Patent Judge.
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`1 This Decision addresses issues that are the same in the above-identified
`proceedings. The parties are not authorized to use this joint heading and
`filing style in their papers.
`2 This is not an expanded panel decision. Judges Petravick, Saindon, and
`Engels are the panel in IPR2020-00827 and -00831. Judges Dang, Saindon,
`and Hudalla are the panel in IPR2020-00829, -00833, -00835, and -00838.
`
`

`

`IPR2020-00827 and -00831 (Patent 8,014,284 B2)
`IPR2020-00829, -00833, and -00835 (Patent 8,559,312 B2)
`IPR2020-00838 (Patent No. 9,392,638)
`
`
`On September 14, 2020, pursuant to 37 C.F.R. § 42.74, Petitioner and
`Patent Owner submitted joint motions to dismiss each of the above-
`identified proceedings (collectively “Joint Motions”) (Paper 123) and joint
`requests to treat a Settlement and License Agreement as business
`confidential information and to keep the Agreement separate from the files
`of the involved patents (collectively “Joint Requests”) (Paper 134), along
`with copies of the Agreement (Ex. 12005).
`In the Joint Motions, the parties represent that they have reached an
`agreement to jointly seek termination of the above-identified proceedings,
`and that the filed copies of the Settlement and License Agreement are true
`and complete copies. Paper 12, 2. The parties further represent that their
`Settlement and License Agreement resolves all disputes and currently
`pending Patent Office proceedings between the parties involving the above-
`identified patents at issue. Paper 12, 2; Paper 13, 2.
`The above-identified proceedings are at an early stage, as we have not
`yet decided whether to institute a trial in any of these proceedings. In view
`
`
`3 For purposes of expediency, we cite to Papers filed in IPR2020-00827.
`The parties submitted similar Joint Motions in IPR2020-00829 (Paper 12),
`IPR2020-00831 (Paper 12), IPR2020-00833 (Paper 12), IPR2020-00835
`(Paper 12), and IPR2020-00838 (Paper 8).
`4 The parties submitted similar Joint Requests regarding the Settlement and
`License Agreement in IPR2020-00829 (Paper 13), IPR2020-00831
`(Paper 13), IPR2020-00833 (Paper 13), IPR2020-00835 (Paper 13), and
`IPR2020-00838 (Paper 9).
`5 For purposes of expediency, we cite to Exhibits filed in IPR2020-00827.
`The parties also submitted a copy of the Settlement and License Agreement
`in IPR2020-00829 (Ex. 1200), IPR2020-00831 (Ex. 1200), IPR2020-00833
`(Ex. 1200), IPR2020-00835 (Ex. 1200), and IPR2020-00838 (Ex. 1200).
`
` 2
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`
`
`

`

`IPR2020-00827 and -00831 (Patent 8,014,284 B2)
`IPR2020-00829, -00833, and -00835 (Patent 8,559,312 B2)
`IPR2020-00838 (Patent No. 9,392,638)
`
`of the early stage of the above-identified proceedings and the settlement
`between the parties, we determine that good cause exists to terminate these
`proceedings with respect to the parties.
`Additionally, upon review of the Joint Requests, we determine that
`good cause exists to treat the Settlement and License Agreement between
`Petitioner and Patent Owner as business confidential information and to
`keep the Agreement separate from the files of the respective patents
`involved in the above-identified proceedings pursuant to 37 C.F.R.
`§ 42.74(c).
`Therefore, the Joint Motions and the Joint Requests are granted.
`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 (IPR2020-00827, Paper 12;
`IPR2020-00829, Paper 12; IPR2020-00831, Paper 12; IPR2020-00833,
`Paper 12; IPR2020-00835, Paper 12; IPR2020-00838, Paper 8) to dismiss
`the above-identified proceedings are granted, and that IPR2020-00827,
`IPR2020-00829, IPR2020-00831, IPR2020-00833, IPR2020-00835, and
`IPR2020-00838 are terminated with respect to both Petitioner and Patent
`Owner; and
`FURTHER ORDERED that the Joint Requests (IPR2020-00827,
`Paper 13; IPR2020-00829, Paper 13; IPR2020-00831, Paper 13; IPR2020-
`00833, Paper 13; IPR2020-00835, Paper 13; IPR2020-00838, Paper 9) that
`the Settlement and License Agreement (IPR2020-00827, Ex. 1200;
`IPR2020-00829, Ex. 1200; IPR2020-00831, Ex. 1200; IPR2020-00833,
`
` 3
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`

`

`IPR2020-00827 and -00831 (Patent 8,014,284 B2)
`IPR2020-00829, -00833, and -00835 (Patent 8,559,312 B2)
`IPR2020-00838 (Patent No. 9,392,638)
`
`Ex. 1200; IPR2020-00835, Ex. 1200; and IPR2020-00838, Ex. 1200) be
`treated as business confidential information and be kept separate from the
`files of the above-identified proceedings and from the files of the involved
`patents (U.S. Patent 8,014,284, U.S. Patent 8,559,312, and U.S. Patent
`9,392,638) under the provisions of 37 C.F.R. § 42.74(c), are granted.
`
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`

`

`IPR2020-00827 and -00831 (Patent 8,014,284 B2)
`IPR2020-00829, -00833, and -00835 (Patent 8,559,312 B2)
`IPR2020-00838 (Patent No. 9,392,638)
`
`PETITIONER:
`Kevin Anderson
`KPAnderson@duanemorris.com
`John Baird
`jmbaird@duanemorris.com
`Carol Ansley
`carol.ansley@commscope.com
`
`
`PATENT OWNER:
`Michael F. Heim
`mheim@hpcllp.com
`R. Allan Bullwinkel
`abullwinkel@hpcllp.com
`Blaine A. Larson
`blarson@hpcllp.com
`
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