Maxell, Ltd.

Patent Trials and Appeals Board

Jan 29, 2021

IPR2020-01600 (P.T.A.B. Jan. 29, 2021)

Trials@uspto.gov Paper No. 8
Tel: 571-272-7822 Entered: January 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
HISENSE CO LTD.,
Petitioner,

v.

MAXELL, LTD.,
Patent Owner.
_______________

IPR2020-01600
Patent 10,327,029 B1
_______________

Before MINN CHUNG, JOHN A. HUDALLA, and
FREDERICK C. LANEY, Administrative Patent Judges.

HUDALLA, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
Granting Request to Keep Agreement Confidential
37 C.F.R. § 42.74

IPR2020-01600
Patent 10,327,029 B1

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively “the Parties”) filed a joint motion to dismiss the Petition.
Paper 6 (“Joint Motion”). Along with the Joint Motion, the Parties filed a
copy of a “Patent License Agreement” (Ex. 1100, “Agreement”), as well as a
joint request (Paper 7, “Joint Request”) to treat the Agreement as business
confidential information and to keep the Agreement separate from the files
of U.S. Patent No. 10,327,029 B1 (“the ’029 patent”).
In the Joint Motion, the Parties represent that they have resolved their
disputes regarding the ’029 patent, and they jointly seek termination of this
proceeding. Joint Motion 2. According to the Parties, “[a]side from the
written agreement concurrently filed with the Board[,] there are no other
agreements, oral or written, between the parties and made in connection
with, or in contemplation of, the termination of the proceeding[].” Id.
This proceeding is at an early stage. We have not considered the
merits of the Petition, Patent Owner has not yet filed a Preliminary
Response, and we have not yet decided whether to institute a trial in the
proceeding. In view of the early stage of the proceeding and the settlement
between the Parties, we determine that good cause exists to dismiss the
petition and terminate the proceeding with respect to the Parties.
In the Joint Request, the Parties request that the Agreement be treated
as business confidential information and be kept separate from the files of
the ’029 patent. Joint Request 2. After reviewing the Agreement between
the Parties, we find that the Agreement contains confidential business
information regarding the terms of settlement. We determine that good
IPR2020-01600
Patent 10,327,029 B1

3
cause exists to treat the 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).
II. ORDER
Accordingly, it is:
ORDERED that the Joint Motion (Paper 6) is granted, and the
Petition in IPR2020-01600 is dismissed and the proceeding is terminated
with respect to Petitioner and Patent Owner; and
FURTHER ORDERED that the Joint Request (Paper 7) is granted,
and the Agreement (Ex. 1100) shall remain designated as “Parties and Board
Only” in the Board’s filing system, shall made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause, and shall be kept separate from the files of Patent 10,327,029
B1 and its associated proceeding, pursuant to 37 C.F.R. § 42.74(c).

IPR2020-01600
Patent 10,327,029 B1

4
PETITIONER:

Kevin Anderson
Patrick McPherson
DUANE MORRIS LLP
kpanderson@duanemorris.com
pdmcpherson@duanemorris.com

PATENT OWNER:

Amanda Bonner
Robert Pluta
Luiz Miranda
James Fussell
Baldine Paul
MAYER BROWN LLP
astreff@mayerbrown.com
rpluta@mayerbrown.com
lmiranda@mayerbrown.com
jfussell@mayerbrown.com
bpaul@mayerbrown.com