`
`571-272-7822
`Entered: April 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`HUAWEI TECHNOLOGIES CO., LTD.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00656
`Patent 9,544,517 B2
`____________
`
`
`
`
`
`
`
`
`
`
`Before MINN CHUNG, TERRENCE W. McMILLIN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motion to Terminate Proceeding Due to
`Settlement before Institution and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`37 C.F.R. §§ 42.71(a) and 42.74
`
`
`
`
`
`
`
`IPR2019-00656
`Patent 9,544,517 B2
`
`
`
`I. DISCUSSION
`On April 10, 2019, with Board authorization (Paper 6), the parties filed a
`Joint Motion to Terminate this proceeding. Paper 7 (“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. 1012) covering
`various matters, including those involving the patent at issue in this proceeding.
`The parties also filed a Joint Request to Treat the Settlement Agreement as
`Business Confidential Information under 37 C.F.R. § 42.74(c). Paper 8.
`
`This proceeding is still in its preliminary stages. Petitioner filed a Petition
`requesting an inter partes review of claims 8–11 of U.S. Patent No. 9,544,517 B2
`(Ex. 1001, “the ’517 patent”). Paper 2, 4–5. We have not entered a decision on
`whether to institute an inter partes review.
`In their Joint Motion, the parties represent that the settlement agreement
`completely resolves the underlying disputes between the parties involving the
`’517 patent at issue in this proceeding. Mot. 2–3. The parties indicate that the
`settlement encompasses this proceeding and the co-pending district court case
`where Patent Owner asserted the ’517 patent against Petitioner. Id. The parties
`also state that the settlement agreement filed as Exhibit 1012 represents all
`agreements made in connection with, or in contemplation of, the termination of
`this proceeding. Mot. 1–2; Ex. 1012, 10. Under these particular circumstances, we
`determine that it is appropriate to dismiss the Petition without rendering any
`further decisions, thereby terminating this proceeding. See 37 C.F.R. § 42.71(a).
`We also have reviewed the settlement agreement, and we determine that good
`cause exists to treat the settlement agreement as business confidential information
`under 37 C.F.R. § 42.74(c).
`
`
`
`2
`
`
`
`IPR2019-00656
`Patent 9,544,517 B2
`
`
`This Order does not constitute a final written decision pursuant to 35 U.S.C.
`§ 318(a).
`
`
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ Joint Request (Paper 8) to treat the settlement
`agreement (Exhibit 1012) as business confidential information under 37 C.F.R.
`§ 42.74(c) is granted; and
`FURTHER ORDERED that the parties’ Joint Motion to Terminate (Paper 7)
`is granted, and the Petition is dismissed resulting in termination of this proceeding.
`
`
`
`
`
`3
`
`
`
`IPR2019-00656
`Patent 9,544,517 B2
`
`
`For PETITIONER:
`Michael Hawkins
`Kim Leung
`Patrick Bisenius
`Stuart Nelson
`Nicholas Stephens
`hawkins@fr.com
`leung@fr.com
`bisenius@fr.com
`snelson@fr.com
`nstephens@fr.com
`
`For PATENT OWNER:
`
`Robert Pluta
`Amanda Bonner
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`
`
`
`
`
`
`
`4
`
`
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