Aegis 11 S.A.

Patent Trials and Appeals Board

Oct 5, 2021

IPR2021-00829 (P.T.A.B. Oct. 5, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Date: October 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
HISENSE COMPANY, LTD. and HISENSE USA CORPORATION,
Petitioner,
v.
AEGIS 11 S.A.,
Patent Owner.
____________

IPR2021-00829 (Patent 9,350,434 B2)
IPR2021-00876 (Patent 9,584,200 B2)
IPR2021-00903 (Patent 9,848,443 B2)1
____________

Before KEN B. BARRETT, JEFFREY S. SMITH, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 We exercise our discretion to issue one combined Decision to be filed in
each case.
IPR2021-00829 (Patent 9,350,434 B2)
IPR2021-00876 (Patent 9,584,200 B2)
IPR2021-00903 (Patent 9,848,443 B2)

2
I. DISCUSSION
With our prior authorization, the parties filed a Joint Motion to
Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 & 42.74,2 a
copy of their written Settlement Agreement,3 and a Joint Motion to Keep
Confidential and Separate Under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c)4 in each proceeding.
The parties indicate that they have settled their underlying dispute and
have agreed to terminate these proceedings. Mot. 2. The parties filed what
they represent is a true and accurate copy of their written Settlement
Agreement and indicate that it resolves each of the present proceedings. Id.
The parties further indicate that they filed a joint stipulation of dismissal in
related district court litigation. Id. at 3.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. See 35 U.S.C. § 317(a) (“An inter partes
review instituted under this chapter shall be terminated with respect to any
petitioner upon the joint request of the petitioner and the patent owner,
unless the Office has decided the merits of the proceeding before the request
for termination is filed.”); 37 C.F.R. § 42.72 (“The Board may terminate a

2 IPR2021-00829, Paper 8; IPR2021-00876, Paper 8; IPR2021-00903,
Paper 8. The substance, with minor exceptions, and pagination of each
motion to terminate is identical. Therefore, our citations to the motions to
terminate apply to the motion filed in each proceeding.
3 IPR2021-00829, Ex. 1020; IPR2021-00876, Ex. 1028; IPR2021-00903,
Ex. 1016.
4 IPR2021-00829, Paper 7; IPR2021-00876, Paper 7; IPR2021-00903,
Paper 7.
IPR2021-00829 (Patent 9,350,434 B2)
IPR2021-00876 (Patent 9,584,200 B2)
IPR2021-00903 (Patent 9,848,443 B2)

3
trial without rendering a final written decision, where appropriate, including
. . . pursuant to a joint request under 35 U.S.C. 317(a) . . . .”); see also Patent
Trial and Appeal Board Consolidated Trial Practice Guide at 86 (Nov. 2019)
(“The Board expects that a proceeding will terminate after the filing of a
settlement agreement, unless the Board has already decided the merits of the
proceeding.” (citing 35 U.S.C. §§ 317(a), 327)). Here, a trial has not yet
been instituted and the merits of the proceedings not yet decided.
Accordingly, we are persuaded that, under these circumstances, termination
of these proceedings is appropriate.
Additionally, we grant the parties’ Joint Motion to Keep Confidential
and Separate. See 35 U.S.C. § 317(b) (“At the request of a party to the
proceeding, the agreement or understanding shall be treated as business
confidential information, shall be kept separate from the file of the involved
patents, and shall be made available only to Federal Government agencies
on written request, or to any person on a showing of good cause.”); see also
37 C.F.R. § 42.74(c) (same).
This Decision does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
II. ORDER
Accordingly, it is
ORDERED that the parties’ Joint Motion to Terminate Pursuant to 35
U.S.C. § 317 and 37 C.F.R. §§ 42.72 & 42.74 (IPR2021-00829, Paper 8;
IPR2021-00876, Paper 8; IPR2021-00903, Paper 8) is granted;
FURTHER ORDERED that the parties’ Joint Motion to Keep
Confidential and Separate Under 35 U.S.C. § 317(b) and 37 C.F.R.
IPR2021-00829 (Patent 9,350,434 B2)
IPR2021-00876 (Patent 9,584,200 B2)
IPR2021-00903 (Patent 9,848,443 B2)

4
§ 42.74(c) (IPR2021-00829, Paper 7; IPR2021-00876, Paper 7; IPR2021-
00903, Paper 7) is granted;
FURTHER ORDERED that the Settlement Agreement (IPR2021-
00829, Ex. 1020; IPR2021-00876, Ex. 1028; IPR2021-00903, Ex. 1016) be
treated as business confidential information, kept separate from the file of
the above-referenced patents, and made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that this proceeding is terminated.

IPR2021-00829 (Patent 9,350,434 B2)
IPR2021-00876 (Patent 9,584,200 B2)
IPR2021-00903 (Patent 9,848,443 B2)

5
For PETITIONER:

Christopher J. Higgins
Jeffrey Johnson
ORRICK, HERRINGTON & SUTCLIFFE LLP
0CHPTABDocket@orrick.com
3J6PTABDocket@orrick.com

For PATENT OWNER:

Timothy Devlin
Leonard Monfredo
Srikant Cheruvu
DEVLIN LAW FIRM LLC
TD-PTAB@devlinlawfirm.com
lmonfredo@devlinlawfirm.com
scheruvu@devlinlawfirm.com