throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 12
`Date: June 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`SAMSUNG ELECTRONICS AMERICA, INC., APPLE INC., and
`MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`IPR2020-00701 (Patent 6,836,654 B2)
`____________
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and JOHN D. HAMANN,
`Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`DECISION
`Settlement as to Petitioner Samsung Prior to Institution of Trial
`Granting Joint Request That Settlement Agreement Be Treated
`as Business Confidential Information and Keep Separate
`37 C.F.R. §§ 42.71(a), 42.74
`
`
`
`I. DISCUSSION
`On June 10, 2020, Petitioner Samsung Electronics America, Inc.
`(“Samsung”) and Patent Owner (collectively “the Settling Parties”) filed,
`with our authorization, a Joint Motion to Terminate as to Petitioner Samsung
`
`

`

`IPR2020-00701
`Patent 6,836,654 B2
`
`Pursuant to 35 U.S.C. § 317 (Paper 9), a copy of their settlement agreement
`(Exhibit 2001, filed with Board Only confidentiality), and a Joint Request
`that Settlement Agreement be Treated as Business Confidential Information
`and Keep Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`(Paper 10).
`The Settling Parties indicate that they reached an agreement to resolve
`their disputes. Paper 9, 2. In particular, the Settling Parties state that they
`reached a settlement agreement that “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).” Id. The Settling
`Parties also indicate that “[a] stipulation of voluntary dismissal with
`prejudice was filed in the district court litigation on May 27, 2020[, and that
`t]he Court dismissed the case on May 28, 2020.” Id.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See 35 U.S.C. § 317(a) (“An 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.”); 37 C.F.R. § 42.72 (“The Board may terminate a
`trial without rendering a final written decision, where appropriate, including
`. . . pursuant to a joint request under 35 U.S.C. 317(a) . . . .”).
` Here, trial has not been instituted yet and the merits of the proceeding
`have not yet been decided. Accordingly, we are persuaded that, under these
`circumstances, dismissing the Petition as to Samsung is appropriate. See 37
`C.F.R. § 42.71(a) (“The Board may take up petitions or motions for
`decisions in any order, may grant, deny, or dismiss any petition or motion,
`
`
`
`2
`
`

`

`IPR2020-00701
`Patent 6,836,654 B2
`
`and may enter any appropriate order.”). Therefore, the Settling Parties’ Joint
`Motion to Terminate as to Petitioner Samsung is granted.
`In addition, the Settling Parties filed what they represent is a true and
`correct copy of their confidential settlement agreement as Exhibit 2001, and
`indicate that “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.” Paper 9, 4. The Settling Parties’ request to treat their settlement
`agreement as business confidential information and to keep it separate from
`the file of the challenged patent is granted. Paper 10, 2; see 35 U.S.C.
`§ 317(b) (“At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential information, shall be
`kept separate from the file of the involved patents, and shall be made
`available only to Federal Government agencies on written request, or to any
`person on a showing of good cause.”); 37 C.F.R. § 42.74(c) (same).
`This Decision does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that the Settling Parties’ Joint Motion to Terminate as to
`Petitioner Samsung Pursuant to 37 C.F.R. § 317 (Paper 9) is granted;
`FURTHER ORDERED that the Petition is dismissed as to Petitioner
`Samsung and the proceeding is terminated as to Petitioner Samsung;
`FURTHER ORDERED that the Settling Parties’ Joint Request that
`Settlement Agreement be Treated as Business Confidential Information and
`
`
`
`3
`
`

`

`IPR2020-00701
`Patent 6,836,654 B2
`
`Keep Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`(Paper 10) is granted; and
`FURTHER ORDERED that the settlement agreement (Exhibit 2001)
`be treated as business confidential information, kept separate from the file of
`the challenged patent, 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).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2020-00701
`Patent 6,836,654 B2
`
`For PETITIONER:
`Tiffany Miller
`James Heintz
`DLA PIPER (US) LLP
`Tiffany.miller@dlapiper.com
`Jim.heintz@dlapiper.com
`
`Naveen Modi
`Joseph Palys
`Philip Citroen
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`philipcitroen@paulhastings.com
`
`For PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Brian Koide
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`brian@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`
`
`
`
`5
`
`

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