`571-272-7822
`
`
`
`
`
`Paper 8
`Entered: April 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INNOLUX CORPORATION,
`Petitioner,
`
`v.
`
`VISTA PEAK VENTURES, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00633
`Patent 7,009,673 B2
`____________
`
`
`Before DEBRA K. STEPHENS, JENNIFER MEYER CHAGNON, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Joint Motion to Terminate Proceeding Due to
`Settlement before Institution and
`Granting Joint Request to File Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.71–42.74
`
`
`
`
`
`
`
`
`IPR2019-00633
`Patent 7,009,673 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner and Patent Owner (collectively “the Parties”) have
`
`requested that the above-identified inter partes review proceeding be
`
`terminated pursuant to a settlement. On April 4, 2019, we authorized the
`
`Parties via email to file a joint motion to terminate the above-identified
`
`proceeding. On April 16, 2019, the Parties filed a Joint Motion to Terminate
`
`the above-identified proceeding (“Joint Motion”). Paper 6. The Parties filed
`
`a Settlement and License Agreement (Exhibit 1014, “Settlement
`
`Agreement”) and filed a Joint Request to File Settlement Agreement as
`
`Business Confidential Information pursuant to 37 C.F.R. § 42.74(c) (“Joint
`
`Request”). Paper 7.
`
`II. DISCUSSION
`
`In the Joint Motion, the Parties represent that they have reached an
`
`agreement to jointly seek termination of this inter partes review proceeding,
`
`that the filed copy of the Settlement Agreement is a true copy, and there are
`
`no other agreements of any kind. Joint Motion 1. Further, the Settlement
`
`Agreement indicates it is a complete agreement. Settlement Agreement 11–
`
`12. The Parties also represent that their settlement agreement resolves all
`
`currently pending Patent Office and District Court proceedings between the
`
`Parties involving U.S. Patent No. 7,009,673 B2 (“the ’673 patent”). Joint
`
`Motion 1–2.
`
`This proceeding is at an early stage. We have not determined whether
`
`to institute trial in this proceeding. The Parties have shown adequately that
`
`the termination of the proceeding is appropriate. Under these circumstances,
`
`we determine that good cause exists to terminate the proceeding.
`
`
`
`2
`
`
`
`IPR2019-00633
`Patent 7,009,673 B2
`
`
`The Parties also requested that the Settlement Agreement be treated as
`
`business confidential information and be kept separate from the file of the
`
`’673 patent. Joint Request 1–2. After reviewing the Settlement Agreement
`
`between Petitioner and Patent Owner, we find that the Settlement Agreement
`
`contains confidential business information regarding the terms of settlement.
`
`We determine that good cause exists to treat the Settlement Agreement
`
`between Petitioner and Patent Owner as business confidential information
`
`pursuant to 37 C.F.R. § 42.74(c).
`
`This Order does not constitute a final written decision pursuant to
`
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, for the reasons discussed above, it is:
`
`ORDERED that the Joint Motion to Terminate is granted, and
`
`IPR2019-00633 is terminated with respect to Petitioner and Patent Owner;
`
`and
`
`
`
`FURTHER ORDERED that the Joint Request to File Settlement
`
`Agreement as Business Confidential Information is granted, and the
`
`Settlement Agreement shall be kept separate from the file of U.S. Patent
`
`No. 7,009,673 B2, and made available only to Federal Government agencies
`
`on written request, or to any person on a showing of good cause, pursuant to
`
`37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`3
`
`
`
`IPR2019-00633
`Patent 7,009,673 B2
`
`For PETITIONER:
`
`Jeffrey Johnson
`3j6ptabdocket@orrick.com
`
`Christopher Higgins
`0chptabdocket@orrick.com
`
`For PATENT OWNER:
`
`Tarek Fahmi
`Tarek.fahmi@ascendalaw.com
`
`Jonathan Tsao
`Jonathan.tsao@ascendalaw.com
`
`
`
`
`
`
`4
`
`
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