`571.272.7822
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`
`
`
`
`
` Paper No. 35
`
` Entered: February 19, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`
`
`IPR2018-00209 (Patent 7,509,139 B2)
`IPR2018-00210 (Patent 6,928,292 B2)
`IPR2018-00233 (Patent 6,754,440 B2)1
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and MINN CHUNG, TERRENCE W. McMILLIN, JOHN A.
`HUDALLA, and AMBER L. HAGY, Administrative Patent Judges.2
`
`CHUNG, Administrative Patent Judge.
`
`
`ORDER CANCELING ORAL HEARING AND
`AUTHORIZING FILING OF MOTION TO TERMINATE
`
`1 This Order addresses issues that are identical in all identified cases. We
`exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`2 This is not a decision by an expanded panel of the Board.
`
`
`
`IPR2018-00209 (Patent 7,509,139 B2)
`IPR2018-00210 (Patent 6,928,292 B2)
`IPR2018-00233 (Patent 6,754,440 B2)
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`On February 15, 2019, the parties advised the Board via email that the
`parties have reached a settlement resolving all disputes between the parties
`in the above-identified proceedings and requested cancelation of the oral
`hearings scheduled on February 21, 2019. The parties also requested
`authorization to file a Motion to Terminate the proceedings.
`As indicated in the Board’s responsive email on February 15, 2019,
`the hearings scheduled for February 21, 2019, have been canceled.
`The parties may agree to settle any issue in a proceeding pursuant to a
`written agreement, a copy of which shall be filed with the Board before
`termination of the trial. 37 C.F.R. § 42.74(a)–(b). Any 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 shall be in writing and a true copy of such agreement or
`understanding shall be filed in the Office before the termination of such
`review. 35 U.S.C. § 317(b).
`The parties are authorized to file a Joint Motion To Terminate in each
`of the above-identified proceedings. The Joint Motions To Terminate must
`update the Board concerning the status of any litigation or proceeding,
`including, but not limited to proceedings in the U.S. Patent and Trademark
`Office, involving the subject patents, and advise the Board whether any
`litigation or proceeding involving the subject patents is contemplated in the
`foreseeable future. The Joint Motions To Terminate also must include a
`copy of any agreement and include a statement certifying that there are no
`
`
`
`2
`
`
`
`IPR2018-00209 (Patent 7,509,139 B2)
`IPR2018-00210 (Patent 6,928,292 B2)
`IPR2018-00233 (Patent 6,754,440 B2)
`
`
`collateral agreements or understandings made in connection with, or in
`contemplation of, the termination of the inter partes reviews. A party to a
`settlement may request that any written agreement be treated as business
`confidential information and be kept separate from the files of an involved
`patent. 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). The request must be filed
`with the settlement agreement. Id.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the oral hearings scheduled on February 21, 2019 in
`IPR2018-00209, IPR2018-00210, and IPR2018-00233 are canceled; and
`FURTHER ORDERED that the parties are authorized to file a Joint
`Motion To Terminate the proceeding and a Joint Request That The
`Settlement Agreement Be Treated As Business Confidential Information in
`each of IPR2018-00209, IPR2018-00210, and IPR2018-00233.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-00209 (Patent 7,509,139 B2)
`IPR2018-00210 (Patent 6,928,292 B2)
`IPR2018-00233 (Patent 6,754,440 B2)
`
`
`For PETITIONER:
`David Garr
`Greg Discher
`Anupam Sharma
`Peter Chen
`COVINGTON & BURLING LLP
`dgarr@cov.com
`gdischer@cov.com
`asharma@cov.com
`pchen@cov.com
`
`For PATENT OWNER:
`Robert Pluta
`Amanda Bonner
`Saqib Siddiqui
`Bryan Nese
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`
`
`
`
`4
`
`
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