VISTA PEAK VENTURES, LLC

Patent Trials and Appeals BoardOct 9, 2020

IPR2020-00824 (P.T.A.B. Oct. 9, 2020)

Trials@uspto.gov Paper 10 571-272-7822 Date: October 9, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ JAPAN DISPLAY, INC., Petitioner, v. VISTA PEAK VENTURES, LLC, Patent Owner. ____________ IPR2020-00824 Patent 7,499,119 B2 ____________ Before MICHAEL R. ZECHER, NATHAN A. ENGELS, and JOHN D. HAMANN, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00824 Patent 7,499,119 B2 2 I. INTRODUCTION On August 25, 2020, with Board authorization via e-mail the previous day, the parties filed a Joint Motion to terminate this proceeding. Paper 8. Along with the Joint Motion, the parties filed a copy of a document they describe as “true and complete copy” (Paper 9) of their Settlement Agreement (Ex. 1012) covering various matters involving the patent at issue in this proceeding. The parties also filed a Joint Request to treat their Settlement Agreement as business confidential information and to maintain the Settlement Agreement separate from the public file under 37 C.F.R. § 42.74(c). Paper 9. II. DISCUSSION Petitioner filed a Petition requesting an inter partes review of claims 1, 4, 5, 7, 12, 15, and 21 of U.S. Patent No. 7,499,119 B2 (Ex. 1001, “the ’119 patent”). Paper 1, 10. This proceeding is still in its preliminary stages. Patent Owner elected to waive filing of a preliminary response (Paper 7), but we have not entered a decision on whether to institute an inter partes review. In the Joint Motion, the Parties represent “the settlement agreement completely resolves the dispute between the Parties relating to the ’119 patent.” Paper 8, 3; Ex. 1012, 1. In view of the early stage of this proceeding and the settlement between the parties, we determine that good cause exists to terminate these proceedings with respect to the parties. We also have reviewed the Settlement Agreement, and we determine that the Settlement Agreement contains business confidential information regarding the terms of the settlement and that good cause exists to treat the Settlement Agreement as business confidential information under 37 C.F.R. § 42.74(c). IPR2020-00824 Patent 7,499,119 B2 3 This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER In consideration of the foregoing, it is hereby: ORDERED that the parties’ Joint Request (Paper 9) to treat the Settlement Agreement (Exhibit 1012) as business confidential information under 37 C.F.R. § 42.74(c) is granted, and the Settlement Agreement shall be kept separate from the files of U.S. Patent No. 7,499,119 B2, 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 the parties’ Joint Motion to Terminate (Paper 8) is granted, and the proceeding is terminated with respect to Petitioner and Patent Owner. IPR2020-00824 Patent 7,499,119 B2 4 For PETITIONER: Eric Klein Lithaw Lim Jeffrey Swigart VINSON & ELKINS eklein@velaw.com hlim@velaw.com jswigart@velaw.com For PATENT OWNER: Tarek Fahmi Holly Atkinson Jonathan Tsao ASCENDA LAW GROUP tarek.fahmi@ascendalaw.com holly.atkinson@ascendalaw.com jonathan.tsao@ascendalaw.com