`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC., APPLE INC., AND
`MOTOROLA MOBILITY LLC.,
`
`Petitioners,
`
`v.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
` IPR2020-00701
`
`PATENT 6,836,654
`___________________________________
`
`
`JOINT MOTION TO TERMINATE AS TO PETITIONER SAMSUNG
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`Petitioner Samsung Electronics America, Inc. (“Samsung”) and Patent Owner
`
`Uniloc 2017 LLC (“Patent Owner”) have reached a settlement. Pursuant to 35 U.S.C.
`
`§ 317(a) and 37 C.F.R. § 42.74, Samsung and Patent Owner jointly move to
`
`terminate the present inter partes review proceeding with respect to Samsung.
`
`I.
`
`STATEMENT OF FACTS
`
`Samsung and Patent Owner have reached an agreement to resolve the
`
`Parties’ disputes. The settlement agreement settles (i) this proceeding, and (ii) the
`
`related district court litigation styled Uniloc 2017 LLC v. Samsung Electronics
`
`America, Inc. et al 2-18-cv-00508 (EDTX). A stipulation of voluntary dismissal
`
`with prejudice was filed in the district court litigation on May 27, 2020. The Court
`
`dismissed the case on May 28, 2020.
`
`Pursuant to 37 C.F.R. §42.74(b), the Parties’ settlement agreement is in
`
`writing, and a true and correct copy is being filed as Exhibit 2001. The settlement
`
`agreement is being filed electronically with access to “Board Only.” A “Joint
`
`Request That Settlement Agreement Be Treated as Business Confidential
`
`Information and Kept Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74” is being filed concurrently with this Joint Motion to Terminate seeking to
`
`treat the settlement agreement as business confidential information and to keep it
`
`separate from the files of the involved patent pursuant to 35 U.S.C. § 317(b) and 37
`
`
`
`2
`
`
`
`C.F.R. § 42.74(c). The Board provided authorization to file this motion in an email
`
`dated June 3, 2020.
`
`II. ARGUMENT
`
`Termination of this inter partes review is requested, and the Parties
`
`respectfully submit that such termination is justified. “There are strong public policy
`
`reasons to favor settlement between the parties to a proceeding.” Consolidated Trial
`
`Practice Guide 86 (Nov. 2019). “The Board expects that a proceeding will terminate
`
`after the filing of a settlement agreement, unless the Board has already decided the
`
`merits of the proceeding.” Id. (citing 35 U.S.C. §§ 317(a)).
`
`The Board should terminate this proceeding as to Samsung, as the Parties
`
`jointly request, for the following reasons.
`
`First, Samsung and Patent Owner have met the statutory requirement that they
`
`file a “joint request” to terminate before the Office “has decided the merits of the
`
`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review shall
`
`be terminated upon such joint request “unless the Office has decided the merits of
`
`the proceeding before the request for termination is filed.” There are no other
`
`preconditions of 35 U.S.C. § 317(a).
`
`Second, Samsung and Patent Owner have reached a settlement as to all the
`
`disputes in this proceeding and as to the patent at issue. A true copy of the settlement
`
`agreement is filed concurrently herewith. See Confidential Ex. 2001. Samsung and
`
`
`
`3
`
`
`
`Patent Owner request that the settlement agreement be treated as business
`
`confidential information and be kept separate from the files of this proceeding in
`
`accordance with 37 C.F.R. § 42.74(c). The Parties certify that Confidential Ex. 2001
`
`is a true copy of the settlement agreement (with no redactions); there are no collateral
`
`agreements referred to in the settlement agreement; and there are no other
`
`agreements or understandings made in connection with, or in contemplation of, the
`
`termination of the inter partes review.;
`
`Third, termination would save significant further expenditure of resources by
`
`the Parties. Termination upon settlement as requested would also further the
`
`purpose of inter partes review proceedings to provide an efficient and less costly
`
`alternative forum for patent disputes. Further, maintaining the proceeding would
`
`discourage further settlements, as patent owners in similar situations would have a
`
`strong disincentive to settle if they perceived that an inter partes review would
`
`continue regardless of a settlement.
`
`III. CONCLUSION
`
`For the foregoing reasons, Samsung and Patent Owner respectfully request
`
`termination of this inter partes review with respect to Samsung.
`
`
`
`
`
`4
`
`
`
`Respectfully submitted,
`
`
`/ Ryan Loveless /
`Lead Counsel
`Ryan Loveless
`Reg. No. 51,970
`ETHERIDGE LAW GROUP
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, Texas 76092
`Telephone: (972) 292-8303
`
`Back-up Counsels
`Brett A. Mangrum
`Reg. No. 64,783
`
`Attorneys for Patent Owner
`
`Date: June 10, 2020
`
`
`Respectfully submitted,
`
`
`/Naveen Modi/
`Lead Counsel
`Naveen Modi
`(Reg. No. 46,224)
`
`Back-up Counsels
`Joseph E. Palys
`(Reg. No. 46,508)
`Phillip W. Citroën
`(Reg. No. 66,541)
`
`
`
`Attorneys for Petitioner
`
`Date: June 10, 2020
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing document has
`
`been served in its entirety Via email, pursuant to the parties’ agreement, to the
`
`following attorneys of record listed below:
`
`L d C
`ea
`
`ounse
`
`l
`
`Tiffany C. Miller
`Reg. No. 52,032
`
`’
`
`Apple-Unilocl9-
`DLA@us.dlapiper.com
`
`iacklUp goMunsel (lfor
`pp e an
`otoro a)
`
`JfimesNM. Eleignztg,
`eg.
`0'
`’
`
`Apple-Unilocl9-
`DLA@us.dlapiper.com
`
`PH-Samsung-Uniloc-
`
`IPR@paulhastings.com
`
`U C
`
`l
`
`3301‘ SP ,‘mnse (for
`
`amsung)
`
`Naveen Modi
`
`Reg. No. 46,224
`
`-’
`
`Joseph E. Palys,
`Reg. No. 46,508
`Phillip W. Citroén,
`Reg. No. 66,541
`
`Dated:
`
`June 10, 2020
`
`By:
`
`/ Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
`
`
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