IPR2020-01335 (P.T.A.B. Jan. 28, 2021)

LG Electronics Inc.

Patent Trials and Appeals BoardJan 28, 2021

IPR2020-01335 (P.T.A.B. Jan. 28, 2021)

Trials@uspto.gov Paper 17 571–272–7822 Date: January 28, 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. ____________ IPR2020-01335 Patent RE46,795 E _______________ Before ROBERT J. WEINSCHENK, GARTH D. BAER, and SCOTT E. BAIN, Administrative Patent Judges. WEINSCHENK, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-01335 Patent RE46,795 E 2 I. INTRODUCTION The parties filed a Joint Motion to Dismiss. Paper 14 (“Motion” or “Mot.”). The parties also filed what they indicate is a true and correct copy of a Confidential Settlement Agreement. Ex. 1028 (“Agreement”). In a Joint Request, the parties identified the Agreement as business confidential information and requested that the Agreement be kept separate from the patent file. Paper 15 (“Joint Request”). For the reasons discussed below, the Motion and Joint Request are granted. II. ANALYSIS This proceeding is in the preliminary stage, and no decision whether to institute a trial has been made. The parties indicate that the Agreement resolves all disputes between the parties regarding U.S. Patent No. RE46,795 E. Mot. 1. The parties filed the Agreement and represent that “there are no other collateral agreements or understandings, oral or written, between the parties made in connection with, or in contemplation of, the termination of this proceeding.” Id. at 3. Under these circumstances, we determine that it is appropriate to dismiss the Petition (Paper 1) and terminate this proceeding. See 37 C.F.R. §§ 42.71(a), 42.74(a). We also determine that it is appropriate to treat the Agreement as business confidential information to be kept separate from the patent file. See 37 C.F.R. § 42.74(c). III. ORDER It is hereby ORDERED that the Joint Motion to Dismiss is granted; FURTHER ORDERED that the Petition is dismissed and this proceeding is terminated as to all parties; and IPR2020-01335 Patent RE46,795 E 3 FURTHER ORDERED that the Joint Request to treat the Confidential Settlement Agreement (Ex. 1028) as business confidential information to be kept separate from the patent file is granted. IPR2020-01335 Patent RE46,795 E 4 PETITIONER: Peter P. Chen Anupam Sharma COVINGTON & BURLING LLP pchen@cov.com asharma@cov.com PATENT OWNER: Peter H. Kang Theodore W. Chandler Eliot Williams Ferenc Pazmandi BAKER BOTTS L.L.P. peter.kang@bakerbotts.com ted.chandler@bakerbotts.com eliot.williams@bakerbotts.com ferenc.pazmandi@bakerbotts.com