`571-272-7822
`
`
`Paper No. 42
`Entered: June 3, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG CHEM LTD. and LG ELECTRONICS, INC.,
`Petitioner,
`v.
`SK INNOVATION CO., LTD.,
`Patent Owner.
`
`
`IPR2020-00657
`Patent 9,698,398 B2
`
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`KOKOSKI, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2020-00657
`Patent 9,698,398 B2
`
`
`On May 26, 2021, with the Board’s authorization, LG Chem Ltd.,
`LG Electronics, Inc., and LG Energy Solution, Ltd. (collectively,
`“Petitioner”) and SK Innovation Co., Ltd. (“Patent Owner”) filed a Joint
`Motion to Terminate the above-identified proceeding due to settlement.
`Paper 40 (“Joint Motion”). The parties also filed a confidential Settlement
`Agreement (Ex. 1043), along with a Joint Request to Treat the Settlement
`Agreement as business confidential pursuant to 37 C.F.R. § 42.74(c)
`(Paper 41 (“Joint Request”)).
`In the Joint Motion, the parties represent that they have settled their
`dispute, and that the Settlement Agreement resolves all currently pending
`proceedings between the parties involving Patent 9,698,398 B2. Joint
`Motion 1–2. The parties confirm that the “settlement agreement is in
`writing, and a true and correct copy is being filed concurrently herewith as
`Exhibits 1043,” and “that there are no collateral agreements or
`understandings made in connection with, or in contemplation of, the
`termination of the present inter partes review.” Id. at 1. Accordingly, the
`parties jointly request termination of this proceeding. Id. at 2.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)1;
`see 35 U.S.C. §317(a); 37 C.F.R. § 42.72. Here, the Board instituted inter
`partes review of the challenged patent on September 30, 2020 (Paper 9), but
`has not decided the merits of this proceeding. Under these circumstances,
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
`
`
`
`
`
`IPR2020-00657
`Patent 9,698,398 B2
`
`we determine that it is appropriate to terminate this proceeding without
`rendering a final written decision.
`The parties also request that the Settlement Agreement be treated as
`business confidential information and be kept separate from the files of the
`patent involved in this inter partes proceeding. Joint Request 2. Upon
`review of the Joint Request, we determine that good cause exists to treat the
`Settlement Agreement as business confidential information pursuant to
`37 C.F.R. § 42.74(c). Therefore, we grant the Joint Request.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate is granted, and the
`above-identified proceeding is terminated with respect to both Petitioner and
`Patent Owner; and
`
`FURTHER ORDERED that the Joint Request to Treat the Settlement
`Agreement as Business Confidential is granted, and the Settlement
`Agreement shall be kept separate from the file of Patent 9,698,398 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
`
`
`
`IPR2020-00657
`Patent 9,698,398 B2
`
`FOR PETITIONER:
`Timothy W. Riffe
`Laura A. Degnan
`Hyun Jin In
`Alex Gelberg
`Grace Kim
`FISH & RICHARDSON P.C.
`riffe@fr.com
`degnan@fr.com
`in@fr.com
`gelberg@fr.com
`gkim@fr.com
`IPR39531-00221IP1@fr.com
`PTABInbound@fr.com
`
`FOR PATENT OWNER:
`Peter P. Chen
`David A. Garr
`Peter A. Swanson
`Daniel J. Farnoly
`Emily Mondry
`Alice Ahn
`COVINGTON & BURLING LLP
`pchen@cov.com
`dgarr@cov.com
`pswanson@cov.com
`dfarnoly@cov.com
`emondry@cov.com
`aahn@cov.com
`
`
`
`
`
`4
`
`
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