SK Innovation Co., Ltd.

Patent Trials and Appeals Board

Jun 3, 2021

IPR2020-00657 (P.T.A.B. Jun. 3, 2021)

Trials@uspto.gov Paper No. 42
571-272-7822 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

2

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.
IPR2020-00657
Patent 9,698,398 B2

3

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).

IPR2020-00657
Patent 9,698,398 B2

4

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