`
`
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 39
`
` Entered: April 4, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`
`
`Case IPR2018-00233
`Patent 6,754,440 B2
`
`
`
`
`
`
`Before MINN CHUNG, TERRENCE W. McMILLIN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`TERMINATION
`Settlement After Institution of Trial
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`
`Upon Board authorization, Huawei Device Co., Ltd. (“Huawei” or
`
`“Petitioner”) and Maxell, Ltd. (“Maxell” or “Patent Owner”) filed a Joint
`
`Motion To Terminate this inter partes review on April 2, 2019. Paper 36
`
`(“Mot.”). Along with the Joint Motion, the parties filed a copy of a
`
`document they describe as “a true and complete copy” (id. at 1) of their
`
`written settlement agreement (Ex. 1027) covering various matters, including
`
`those involving the patent at issue in this proceeding. The parties certify that
`
`there are no other agreements or understandings, oral or written, between the
`
`parties, including any collateral agreements, made in connection with, or in
`
`contemplation of, the termination of this proceeding. Mot. 1. The parties
`
`also filed a joint request to treat the settlement agreement as business
`
`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`Paper 37.
`
`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.” In this
`
`proceeding, we have not yet reached a decision on the merits with respect to
`
`the patentability of any involved claim. Accordingly, we must terminate the
`
`review with respect to Huawei, as Petitioner.
`
`Furthermore, “[i]f no petitioner remains in the inter partes review, the
`
`Office may terminate the review or proceed to a final written decision under
`
`section 318(a).” 35 U.S.C. § 317(a). We, therefore, have discretion to
`
`terminate this review with respect to Maxell.
`
`Although a Decision on Institution instituting trial was entered on
`
`May 24, 2018 (Paper 9), we have not held an oral hearing (which was
`
`
`
`2
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`
`scheduled to be held on February 21, 2019, but was canceled at the request
`
`of the parties in light of impending settlement (Paper 35, 2–3)), and we have
`
`not entered a Final Written Decision on the merits in this proceeding. In
`
`their Joint Motion, the parties represent that the settlement agreement
`
`completely resolves the underlying disputes between the parties involving
`
`U.S. Patent No. 6,754,440 B2 (Ex. 1001, “the ’440 patent”) at issue in this
`
`proceeding. Mot. 2. When, as here, we have not entered a Final Written
`
`Decision on the merits, we generally will terminate the trial after a
`
`settlement agreement is filed. See Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Under the particular
`
`circumstances of this case, we determine that it is appropriate to terminate
`
`this inter partes review as to both Huawei and Maxell without rendering a
`
`Final Written Decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`
`After reviewing the parties’ settlement agreement, we find the
`
`settlement agreement contains business confidential information regarding
`
`the terms of the settlement and good cause exists to treat the settlement
`
`agreement as business confidential information under 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(c).
`
`
`
`Accordingly, it is
`
`ORDERED that the parties’ joint request (Paper 37) to treat the
`
`parties’ settlement agreement as business confidential information is
`
`granted;
`
`FURTHER ORDERED that the settlement agreement (Exhibit 1027)
`
`shall be treated as business confidential information, kept separate from the
`
`file of the ’440 patent, and made available only to Federal Government
`
`
`
`3
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`
`agencies on written request to the Board, or to any person on a showing of
`
`good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c);
`
`FURTHER ORDERED that the Joint Motion to Terminate this inter
`
`partes review (Paper 36) is granted; and
`
`FURTHER ORDERED that this inter partes review is hereby
`
`terminated.
`
`
`
`
`
`
`
`PETITIONER:
`
`Peter Chen
`pchen@cov.com
`
`Greg Discher
`gdischer@cov.com
`
`Anupam Sharma
`asharma@cov.com
`
`David Garr
`dgarr@cov.com
`
`PATENT OWNER:
`
`Robert Pluta
`rpluta@mayerbrown.com
`
`Amanda Bonner
`astreff@mayerbrown.com
`
`
`
`
`
`4
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`
`Saqib Siddiqui
`ssiddiqui@mayerbrown.com
`
`Bryan Nese
`bnese@mayerbrown.com
`
`
`
`
`
`5
`
`
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