LG Electronics Inc.

Patent Trials and Appeals Board

Mar 10, 2021

IPR2020-01513 (P.T.A.B. Mar. 10, 2021)

Trials@uspto.gov Paper No. 13
Tel: 571-272-7822 Entered: March 10, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ROKU, INC.,
Petitioner,

v.

LG ELECTRONICS INC.,
Patent Owner.
____________

IPR2020-01513
Patent No. 10,334,311
____________

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

BAIN, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2020-01513
Patent No. 10,334,311

2
On March 10, 2021, pursuant to our authorization, the parties filed a
Joint Motion to Terminate proceedings in this case. Paper 12 (“Motion”).
In the Motion, the parties state that “Patent Owner asserted the ’311
patent against various Hisense entities in LG Electronics Inc. v. Hisense
Electronics Manufacturing Company of America Corporation, et al., Case
No. 2:19-cv-09474-JAK (Ex) (C.D. Cal.),” and that “Roku is not a party to
that action, but Patent Owner’s assertion of its ’311 patent rights against
Hisense involves certain Roku technology used in the Hisense accused
products.” Id. at 2. The parties further state that “[o]n January 22, 2021,
Hisense and Patent Owner filed a Report of Settlement and Joint Stipulation
to Stay Action Pending Dismissal in that litigation. The Parties therefore no
longer wish to pursue this proceeding.”
The parties certify that “there are no other agreements or
understandings, oral or written, between Patent Owner and Petitioner,
including any collateral agreements, made in connection with, or in
contemplation of, the termination of the present proceeding.” Id.
According to the parties’ Motion, they have resolved their dispute
with respect to the ’311 patent, and have agreed to terminate this proceeding.
Id. at 2–3. The parties also state that they are aware of no other matter
before the Office that would be affected by termination of this proceeding.
Id. at 3.
This proceeding is at an early stage. The Board has not yet
determined whether to institute trial. Under these circumstances, we
determine that it is appropriate to dismiss the petition. 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).
IPR2020-01513
Patent No. 10,334,311

3

Accordingly, it is
ORDERED that the Joint Motion to Terminate IPR2020-01513 is
granted; and
FURTHER ORDERED that the Petition for Inter Partes Review in
IPR2020-01513 is dismissed.

For PETITIONER:

Jonathan Baker
Craig Allison
Jia-Geng Lu
DICKINSON WRIGHT LLP
jdbaker@dickinsonwright.com
callison@dickinsonwright.com
jlu@dickinsonwright.com

For PATENT OWNER:

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