`571-272-7822 Entered: April 10, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`
`Patent Owner.
`
`_______________
`
`Cases
`IPR2017-01637 (Patent 7,590,059 B2)
`IPR2017-01675 (Patent 7,310,104 B2)1
`_______________
`
`
`
`Before THOMAS L. GIANNETTI, DANIEL J. GALLIGAN, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`ORDER
`Termination of Trial
`35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties are not
`authorized to use a multiple case caption.
`
`
`
`IPR2017-01637 (Patent 7,590,059 B2)
`IPR2017-01675 (Patent 7,310,104 B2)
`
`
`DISCUSSION
`I.
`On April 9, 2018, with Board authorization, the parties filed in each of
`IPR2017-01637 and IPR2017-01675 a Joint Motion to Terminate2 along
`with what they indicate is a true copy of their settlement agreement.3 In the
`Joint Motions to Terminate, the parties represent that they have settled their
`disputes regarding the patents at issue in these proceedings, including the
`litigation before the U.S. District Court for the Central District of California
`and before the U.S. International Trade Commission, and they state that
`“[t]here are no additional collateral agreements or understandings made in
`connection with, or in contemplation of, termination of the inter partes
`review.”4
`In each of these proceedings, the parties also filed a Joint Request to
`have their settlement agreement treated as business confidential information
`and kept separate from the file of the respective patent pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).5
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” Further,
`under 35 U.S.C. § 317(b),
`[a]ny agreement or understanding between the patent owner and
`a petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or
`in contemplation of, the termination of an inter partes review
`
`2 IPR2017-01637, Paper 12; IPR2017-01675, Paper 11.
`3 IPR2017-01637, Ex. 1016; IPR2017-01675, Ex. 1024.
`4 IPR2017-01637, Paper 12, 1–2; IPR2017-01675, Paper 11, 1–2.
`5 IPR2017-01637, Paper 13; IPR2017-01675, Paper 12.
`
`
`
`IPR2017-01637 (Patent 7,590,059 B2)
`IPR2017-01675 (Patent 7,310,104 B2)
`
`
`under this section shall be in writing and a true copy of such
`agreement or understanding shall be filed in the Office before
`the termination.
`
`As the parties have filed their written settlement agreement and jointly
`requested termination, we determine that it is appropriate to terminate these
`proceedings without rendering final written decisions under 35 U.S.C.
`§ 318(a). See 35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74.
`Accordingly, the Joint Motions to Terminate the above-identified
`proceedings and the Joint Requests to treat the settlement agreement as
`business confidential information are granted. As requested by the parties,
`the settlement agreement will be treated as business confidential information
`and will be kept separate from the patent file. 35 U.S.C. § 317(b); 37 C.F.R.
`§ 42.74(c). This paper does not constitute a final written decision pursuant
`to 35 U.S.C. § 318(a).
`
`II. ORDER
`
`Therefore, it is
`ORDERED that the parties’ Joint Requests that their settlement
`agreement (IPR2017-01637, Ex. 1016; IPR2017-01675, Ex. 1024) be treated
`as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c) are GRANTED; and
`FURTHER ORDERED that the parties’ Joint Motions to Terminate
`these proceeding are GRANTED, and these proceedings are hereby
`terminated.
`
`
`
`IPR2017-01637 (Patent 7,590,059 B2)
`IPR2017-01675 (Patent 7,310,104 B2)
`
`PETITIONER:
`
`Erika Arner
`erika.arner@finnegan.com
`
`Joshua Goldberg
`joshua.goldberg@finnegan.com
`
`Cory Bell
`cory.bell@finnegan.com
`
`
`PATENT OWNER:
`
`John Caracappa
`jcaracap@steptoe.com
`
`Thomas Yebernetsky
`tyebernetsky@steptoe.com
`
`