Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 51
`Entered: September 9, 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.
`____________
`
`IPR2017-00353 (Patent 8,983,134 B2);
`IPR2017-01218 (Patent 8,983,134 B2)
`
`Per Curiam.
`
`
`
`
`
`
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1
`
`
`Tel: 571-272-7822
`
`
`Paper 51
`Entered: September 9, 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.
`____________
`
`IPR2017-00353 (Patent 8,983,134 B2);
`IPR2017-01218 (Patent 8,983,134 B2)
`
`Per Curiam.
`
`
`
`
`
`
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1
`
`
`
`IPR2017-00353 (Patent 8,983,134 B2);
`IPR2017-01218 (Patent 8,983,134 B2)
`
`I.
`
`INTRODUCTION
`
`With the Board’s authorization, Petitioner and Patent Owner
`
`(“Parties”) filed Joint Motions to Terminate these proceedings due to
`
`settlement. IPR2017-00353, Paper 43; IPR2017-01218, Paper 49. In
`
`support of these motions, the Parties filed a copy of a confidential settlement
`
`agreement (IPR2017-00353, Ex. 1013; IPR2017-01218, Ex. 1024
`
`(“Settlement Agreement”)), as well as joint requests to file the settlement
`
`agreement as business confidential information pursuant to 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c) (IPR2017-00353, Paper 44; IPR2017-
`
`01218, Paper 50). For simplicity, we refer below only to the filings in
`
`IPR2017-00353, which are representative of the filings in both of the
`
`proceedings.
`
`II. DISCUSSION
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for termination is filed.”
`
`Section 35 U.S.C. § 317(a) also provides that if no petitioner remains in the
`
`inter partes review, the Office may terminate the review. Section 317(b)
`
`requires that any agreement between the parties, including collateral
`
`agreements, made in connection with the termination of an inter partes
`
`review “shall be in writing and a true copy of such agreement or
`
`understanding shall be filed in the Office before the termination of the inter
`
`partes review as between the parties.”
`
`The Parties represent that they have reached an agreement to seek
`
`termination of these inter partes review proceedings jointly. E.g., -00353
`
`Joint Motion 2. Further, “there are no collateral agreement[s] or
`
`
`
`
`
`IPR2017-00353 (Patent 8,983,134 B2);
`IPR2017-01218 (Patent 8,983,134 B2)
`
`understandings made in connection with, or in contemplation of, the
`
`termination of this proceeding,” and the filed copy of the Settlement
`
`Agreement is a true and correct copy. E.g., id. The Parties further represent
`
`that the Settlement Agreement resolves all currently pending Patent Office
`
`and District Court proceedings between the Parties involving the patents at
`
`issue. E.g., id. at 3–4.
`
`We instituted trials on the above-identified proceedings. Although we
`
`decided the merits of the proceedings and entered final written decisions, the
`
`Federal Circuit vacated those final written decisions. Image Processing
`
`Techs. LLC v. Samsung Elecs. Co., et al., Nos. 18-2156, 19-1408, 19-1485
`
`(Fed. Cir. Dec. 5, 2019) (order vacating and remanding). Notwithstanding
`
`that the proceedings have moved beyond the preliminary stages, the Parties
`
`have shown adequately that the termination of the proceedings is
`
`appropriate. Under these circumstances, we determine that good cause
`
`exists to terminate the proceedings. We further determine that the
`
`Settlement Agreement complies with the requirements for written
`
`agreements regarding termination set forth in 35 U.S.C. § 317(b).
`
`The Parties also filed Joint Requests that the Settlement Agreement be
`
`treated as business confidential information and be kept separate from the
`
`file of the respective patents involved in this inter partes proceeding. E.g.,
`
`-00353 Joint Request. After reviewing the Settlement Agreement between
`
`Petitioner and Patent Owner, we find that the Settlement Agreement contains
`
`confidential business information regarding the terms of settlement. We
`
`determine that good cause exists to treat the Settlement Agreement between
`
`Petitioner and Patent Owner as business confidential information pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`IPR2017-00353 (Patent 8,983,134 B2);
`IPR2017-01218 (Patent 8,983,134 B2)
`
`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, for each proceeding, the Joint Motion to Terminate
`
`is granted, and IPR2017-00353 and IPR2017-01218 are terminated pursuant
`
`to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`FURTHER ORDERED that, for each proceeding, the Joint Request to
`
`Treat the Settlement Agreement as Business Confidential Information is
`
`granted, and the Settlement Agreement shall be kept separate from the file
`
`of U.S. Patent No. 8,983,134 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).
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00353 (Patent 8,983,134 B2);
`IPR2017-01218 (Patent 8,983,134 B2)
`
`
`For PETITIONER:
`
`Marc Pensabene
`John Kappos
`Nicholas Whilt
`Brian Cook
`Clarence Rowland
`O’MELVENY & MYERS LLP
`mpensabene@omm.com
`jkappos@omm.com
`nwhilt@omm.com
`bcook@omm.com
`crowland@omm.com
`
`For PATENT OWNER:
`
`Chris Coulson
`Michael Zachary
`Lauren Robinson
`Craig Allison
`BUNSOW DE MORY LLP
`ccoulson@bdiplaw.com
`mzachary@bdiplaw.com
`lrobinson@bdiplaw.com
`callison@bdiplaw.com
`
`
`
`
`
`
`
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