Paper No. 49
`Filed: August 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`PETITIONER,
`V.
`IMAGE PROCESSING TECHNOLOGIES LLC
`PATENT OWNER.
`_____________
`CASE IPR2017-01218
`PATENT 8,983,134
`______________
`BEFORE JONI Y. CHANG, MIRIAM L. QUINN, AND SHEILA F. MCSHANE,
`ADMINISTRATIVE PATENT JUDGES.
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`Filed: August 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`PETITIONER,
`V.
`IMAGE PROCESSING TECHNOLOGIES LLC
`PATENT OWNER.
`_____________
`CASE IPR2017-01218
`PATENT 8,983,134
`______________
`BEFORE JONI Y. CHANG, MIRIAM L. QUINN, AND SHEILA F. MCSHANE,
`ADMINISTRATIVE PATENT JUDGES.
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`Petitioner Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc., and Patent Owner Image Processing Technologies LLC have fully executed a
`
`settlement agreement in writing that resolves all underlying disputes between the
`
`parties, including this proceeding. In an email dated August 6, 2020, the Board
`
`authorized the parties to file a joint motion to terminate this inter partes review.
`
`As required by the Board and by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the
`
`parties jointly certify that they are submitting herewith a true, fully executed copy
`
`of the settlement agreement along with a joint request to file that settlement
`
`agreement as business confidential information designated “Parties and Board
`
`Only,” as authorized by the Board in its August 6, 2020 email and by 37 C.F.R. §
`
`42.74(c). The parties also jointly certify that aside from the settlement agreement
`
`filed herewith, there are no collateral agreement or understandings made in
`
`connection with, or in contemplation of, the termination of this proceeding.
`
`II.
`
`STATUS OF PROCEEDINGS
`A Final Written Decision was issued in the present proceeding on September
`
`28, 2018, Paper No. 40. Patent Owner filed a Notice of Appeal on January 11,
`
`2019, and Petitioner filed a Notice of Cross Appeal on January 25, 2019. On
`
`October 31, 2019, the Federal Circuit issued a decision in Arthrex, Inc. v. Smith &
`
`Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), vacating multiple PTAB decisions,
`
`
`
`including this one. On May 1, 2020, the Board entered a General Order holding
`
`this case, among others, in abeyance until the Supreme Court acts on a petition for
`
`certiorari of the Federal Circuit’s Arthrex decision.
`
`The following are the only proceedings between the parties in the United
`
`States, or that involve the subject patent:
`
`District Court Case
`Image Processing Technologies
`LLC v. Samsung Electronics Co.,
`Ltd. and Samsung Electronics
`America, Inc., Case No. 2:16-CV-
`00505-JRG (E.D. Tex.)
`
`
`U.S. Patent Nos.
`8,983,134
`8,805,001
`8,989,445
`6,959,293
`7,650,015
`
`Status
`Order dismissing case
`with prejudice and
`closing case entered on
`August 6, 2020
`
`USPTO Action
`IPR2017-01218
`
`U.S. Patent No.
`8,983,134
`
`IPR2017-00353
`
`8,983,134
`
`IPR2017-00347
`IPR2017-01228
`IPR2017-00357
`IPR2017-01212
`IPR2017-01217
`IPR2017-00355
`IPR2017-01231
`IPR2017-00336
`IPR2017-01189
`90/014,056
`
`
`8,805,001
`8,805,001
`8,989,445
`8,989,445
`8,989,445
`7,650,015
`7,650,015
`6,959,293
`6,959,293
`6,959,293
`
`Status
`Subject of this joint
`motion to terminate
`Joint motion to terminate
`filed concurrently with
`this motion
`Terminated
`Terminated
`Terminated
`Terminated
`Terminated
`Terminated
`Terminated
`Terminated
`Terminated
`Certificate Issued
`
`
`
`III. RELIEF REQUESTED
`Petitioner and Patent Owner jointly request that the Board terminate this
`
`proceeding in its entirety. Termination is appropriate at this stage in view of the
`
`settlement agreement the parties are filing herewith. The agreement ends all patent
`
`disputes between the parties, including this proceeding.
`
`Both Congress and the federal courts have expressed a strong interest in
`
`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
`
`U.S. 346, 352 (1981) (“The purpose of [Federal Rule of Civil Procedure] 68 is to
`
`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575,
`
`1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479
`
`U.S. 950 (1986). The U.S. Court of Appeals for the Federal Circuit also places a
`
`particularly strong emphasis on settlement. See Cheyenne River Sioux Tribe v.
`
`U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to
`
`reduce antagonism and hostility between parties). Moreover, the Board generally
`
`expects that a proceeding will terminate after the filing of a settlement. See, e.g.,
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
`
`While the Board did issue a Final Written Decision in this case, that decision has
`
`been vacated based on the Constitutional issue decided in Arthrex, meaning that a
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`new panel and new trial could be required here. There is no public policy reason to
`
`allow this proceeding to continue, however, as there are over 100 other PTAB
`
`
`
`proceedings similarly situated and this proceeding presents no unique
`
`circumstances with respect to the issues in Arthrex.
`
`Maintaining this proceeding after Petitioner’s settlement with Patent Owner
`
`would discourage future settlements by removing a primary motivation for
`
`settlement: eliminating litigation risk by resolving the parties’ disputes and ending
`
`the pending proceedings between them. For patent owners, litigation risks include
`
`the potential for an invalidity ruling against their patents. If a patent owner knows
`
`that an inter partes review or covered business method review will likely continue
`
`regardless of settlement, it creates a strong disincentive for the patent owner to
`
`settle.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner and Patent Owner jointly request that
`
`the Board terminate this proceeding in its entirety.
`
`
`
`
`
`Dated: August 13, 2020
`
`
`
`Respectfully submitted,
`
`By: /s/ Nicholas J. Whilt
` Nicholas J. Whilt
` Reg. No. 72,081
`
`Counsel for Petitioner Samsung
`Electronics Co., Ltd. and Samsung
`Electronics America, Inc.
`
`
`
`
`
`
`By: /s/ Lauren N. Robinson
` Lauren N. Robinson
` Reg. No. 74,404
`
`Counsel for Patent Owner Image
`Processing Technologies LLC
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies pursuant to 37 C.F.R. §42.6(e) and §42.105 that on August 13,
`
`2020, a true and correct copy of the Joint Motion to Terminate Proceeding was served via
`
`electronic mail upon the following counsel of record for Patent Owner:
`
`LEAD COUNSEL
`
`Lauren N. Robinson
`Registration No. 74,404
`Bunsow De Mory LLP
`701 El Camino Real
`Redwood City, CA 94063
`Telephone: 650-351-7248
`Facsimile: 415-426-4744
`lrobinson@bdiplaw.com
`
`
`
`
`BACK-UP COUNSEL
`
`Michael Zachary (pro hac vice)
`Bunsow De Mory LLP
`701 El Camino Real
`Redwood City, CA 94063
`Telephone: 650-351-7248
`Facsimile: 415-426-4744
`mzachary@bdiplaw.com
`
`Respectfully submitted,
`.
`/s/ Nicholas J. Whilt
`Nicholas J. Whilt (Reg. No. 72,081)
`Email: nwhilt@omm.com
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Telephone: (213) 430-6000
`Facsimile: (213) 430-6407
`
`Attorney for Petitioner
`
`
`
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