Barkan Wireless IP Holdings, L.P.

Patent Trials and Appeals Board

Sep 25, 2020

IPR2020-00829 (P.T.A.B. Sep. 25, 2020)

Trials@uspto.gov Paper 15
571-272-7822 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)

2

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).
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)

3

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,
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)

4

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.

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)

5

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