CommScope Technologies LLC

Patent Trials and Appeals BoardNov 22, 2021

IPR2021-01391 (P.T.A.B. Nov. 22, 2021)

Trials@uspto.gov Paper No. 9 571.272.7822 Entered: November 22, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SOLID INC., Petitioner, v. COMMSCOPE TECHNOLOGIES LLC, Patent Owner. ____________ IPR2021-01390 (Patent 7,639,982 B2) IPR2021-01391 (Patent 7,639,982 B2) IPR2021-01392 (Patent 8,326,218 B2) IPR2021-01393 (Patent 8,577,286 B2) IPR2021-01394 (Patent 9,332,402 B2)1 ____________ Before BARBARA A. PARVIS, STACEY G. WHITE, TERRENCE W. McMILLIN, and SHARON FENICK, Administrative Patent Judges.2 PER CURIAM DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 1 This Order applies to the above-listed proceedings. We exercise our discretion to issue one Order to be filed in each case. The parties are not authorized to use this style heading for any subsequent papers. 2 This is not an expanded panel. IPR2021-01390 (Patent 7,639,982 B2) IPR2021-01391 (Patent 7,639,982 B2) IPR2021-01392 (Patent 8,326,218 B2) IPR2021-01393 (Patent 8,577,286 B2) IPR2021-01394 (Patent 9,332,402 B2) 2 I. INTRODUCTION On November 10, 2021, with our authorization, Petitioner and Patent Owner (collectively referred to as “the Parties”) filed Joint Motions to Dismiss the Petitions in the above-referenced proceedings (collectively, “Joint Motions”). Paper 6.3 Along with the Motions, the Parties filed copies of a Settlement Agreement between the Parties (“Agreement”) (Ex. 1050), as well as Joint Motions to Keep the Settlement Agreement Separate (collectively, “Joint Motions to Keep Separate”) (Paper 7). II. DISCUSSION In the Joint Motions, the Parties represent that they have resolved their dispute as to the patents in the above-identified inter partes review proceedings. Paper 6, 3. The Parties further represent that Patent Owner has dismissed the litigation associated with the patents without prejudice, that the patents have since expired, and Patent Owner has no plans to refile its suit against Petitioner on any of the patents. Id. Further, in the Joint Motions to Keep Separate, the Parties: (a) request that the Agreement be treated as business confidential information and be kept separate from the files of the respective patents involved in the above-identified inter partes proceedings; and (b) represent that the filed copies of the Agreement are true copies. Paper 7, 2. These proceedings are at an early stage, and we have not yet decided whether to institute a trial in any of these proceedings. In view of the early 3 All citations are to IPR2021-01390 with the understanding that the other proceedings include papers and exhibits having substantially the same substantive content. IPR2021-01390 (Patent 7,639,982 B2) IPR2021-01391 (Patent 7,639,982 B2) IPR2021-01392 (Patent 8,326,218 B2) IPR2021-01393 (Patent 8,577,286 B2) IPR2021-01394 (Patent 9,332,402 B2) 3 stage of these proceedings and the settlement between the Parties, we determine that good cause exists to dismiss these proceedings with prejudice. Further, 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 cause exists to treat the Agreement between the Parties as business confidential information and to keep the Agreement separate from the files of the patents in the above- identified inter partes review proceedings pursuant to 37 C.F.R. § 42.74(c). In the Joint Motions to Keep Separate, the Parties additionally request “that the Board order that[,] in the event a person or entity makes a written request . . . for access to the [Agreement], . . . any such written request be served upon the Parties on the day the written request is provided to the Board.” Paper 7, 2. We have no such procedure to serve upon the Parties a request for access to the Agreement, and, further, our regulations do not require us to do so. Therefore, we decline to issue an order regarding requests to access the Agreement. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that the Parties’ Joint Motions to Dismiss the Petitions are granted, the Petitions in IPR2021-01390, IPR2021-01391, IPR2021-001392, IPR2021-01393, and IPR2021-01394 are dismissed with prejudice, and the aforementioned proceedings are terminated; and IPR2021-01390 (Patent 7,639,982 B2) IPR2021-01391 (Patent 7,639,982 B2) IPR2021-01392 (Patent 8,326,218 B2) IPR2021-01393 (Patent 8,577,286 B2) IPR2021-01394 (Patent 9,332,402 B2) 4 FURTHER ORDERED that the Joint Motions to Keep the Settlement Agreement Separate are granted, and the Agreement shall be kept separate from the files of Patent 7,639,982 B2, Patent 8,326,218 B2, Patent 8,577,286 B2, and Patent 9,332,402 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). IPR2021-01390 (Patent 7,639,982 B2) IPR2021-01391 (Patent 7,639,982 B2) IPR2021-01392 (Patent 8,326,218 B2) IPR2021-01393 (Patent 8,577,286 B2) IPR2021-01394 (Patent 9,332,402 B2) 5 PETITIONER: Matthew Johnson Sean Christian Platt Stephanie Mishaga Yeah-Sil Moon David Cochran JONES DAY mwjohnson@jonesday.com cplatt@jonesday.com smishaga@jonesday.com ymoon@jonesday.com dcochran@jonesday.com PATENT OWNER: Philip Caspers Iain McIntyre Aaron Pederson CARLSON CASPERS pcaspers@ccvl.com imcintyre@carlsoncaspers.com apederson@carlsoncaspers.com