LG Electronics Inc.

Patent Trials and Appeals Board

Mar 26, 2021

IPR2020-01164 (P.T.A.B. Mar. 26, 2021)

Trials@uspto.gov Paper No. 19
Tel: 571-272-7822 Entered: March 26, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HISENSE VISUAL TECHNOLOGY CO. LTD.,
Petitioner,

v.

LG ELECTRONICS INC.,
Patent Owner.
____________

IPR2020-01164
Patent No. 9,271,191

IPR2020-01208
Patent No. 7,839,452
____________

Before ROBERT J. WEINSCHENK, GARTH D. BAER, and
SCOTT E. BAIN, Administrative Patent Judges.

BAIN, Administrative Patent Judge.
TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74
IPR2020-01164, IPR2020-01208
Patent No. 9,271,191, Patent No. 7,839,452

2
On March 3, 2021, pursuant to our authorization, the parties filed
Joint Motions to Terminate proceedings in the above-captioned cases. Paper
17 (“Motion”).1 Accompanying the motion, the parties filed copies of a
settlement and license agreement (“Settlement Agreement”), along with a
Joint Request To Treat Settlement Agreement As Business Confidential
Information, to be kept separate from the files of the involved patent and
inter partes review pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74.
Ex. 1053; Paper 18.
The parties state that the Settlement Agreement “settles all disputes”
between Petitioner and Patent Owner regarding the patents in the above-
captioned cases. Paper 17, 1. The parties further state that they are
“unaware of any other pending proceedings relating to the [subject patents]
before the Board, or any other matter before the USPTO that would be
affected by the requested termination of this proceeding[s].” Id.
We granted institution of inter partes review in these proceedings on
January 7, 2021. Paper 15. Nevertheless, these proceedings are at an early
stage. Under these circumstances, we determine that it is appropriate to
terminate the proceedings. See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper
does not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
As requested by the parties, the Settlement Agreement will be treated
as business confidential information and kept separate from the patent files.
37 C.F.R. § 42.74(c).
Accordingly, it is

1 Our Decision refers to the paper numbers associated with IPR2020-01164.
The filings in IPR2020-01208 are essentially identical.
IPR2020-01164, IPR2020-01208
Patent No. 9,271,191, Patent No. 7,839,452

3
ORDERED that the Joint Motions to Dismiss and Terminate
IPR2020-01164 and IPR2020-01208 are granted;
FURTHER ORDERED that the parties’ Joint Requests to have their
Settlement Agreement treated as business confidential information, to be
kept separate from the patent files, are granted; and
FURTHER ORDERED that the proceedings in IPR2020-01164 and
IPR2020-01208 are terminated.

For PETITIONER:

Peter Chen
Anupam Sharma
COVINGTON & BURLING
pchen@cov.com
asharma@cov.com

For PATENT OWNER:

Peter Kang
Theodore Chandler
BAKER BOTTS LLP
Peter.kang@bakerbotts.com
Ted.chandler@bakerbotts.com