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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner
`
`
`
`Case No. IPR2021-00539
`Patent No. 9,860,044
`
`
`UNOPPOSED MOTION TO DISMISS
`PETITION FOR INTER PARTES REVIEW
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`
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`On May 14, 2021 the Board authorized Petitioner, Samsung Electronics Co.,
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`Ltd. to file unopposed motions to dismiss in each of IPR2021-00459, IPR2021-
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`00460, IPR2021-00486, IPR2021-00487, IPR2021-00508, IPR2021-00509,
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`IPR2021-00536, IPR2021-00537, IPR2021-00539, IPR2021-00567, IPR2021-
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`00568, IPR2021-00569, IPR2021-00729, IPR2021-00730, IPR2021-00731, and
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`IPR2021-00732.
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`More specifically, in response to Petitioner’s request for authorization to file
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`an unopposed motion to dismiss in each of the above-captioned proceedings, the
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`Board stated that “Petitioner is authorized to file either a motion to dismiss or, if
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`the parties seek termination pursuant to a settlement, a joint motion to terminate,”
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`adding that “[i]f Petitioner files a motion to dismiss a proceeding, Petitioner shall
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`identify any ‘appropriate circumstances’ giving rise to the motion” and “specify …
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`whether Patent Owner opposes it.” Consistent with the Board’s instruction, this
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`motion to dismiss offers an explanation of the appropriate circumstances giving
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`rise to this motion, while also confirming that Patent Owner does not oppose this
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`motion.
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`Moreover, as explained in more detail below, dismissal of the instant inter
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`partes review Petition under 37 C.F.R. 42.71 is the appropriate mechanism for
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`addressing the Petition under the circumstances giving rise to this motion, as the
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`
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`Petition is presently pending and awaiting a decision on institution,1 and dismissal
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`would preserve the Board’s and parties’ resources and promote a speedy and
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`inexpensive resolution to the dispute, without prejudicing Patent Owner. See Intel
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`Corp. v. Tela Innovations, Inc., IPR2019-01257 Pap. 16, 3 (PTAB Jan. 2, 2020)
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`(granting petitioner’s unopposed motion to dismiss “to promote efficiency and
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`minimize unnecessary costs”); 37 C.F.R. 42.71 (The Board may “grant, deny, or
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`dismiss” a petition or motion).
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`Accordingly, Petitioner hereby moves unopposed for dismissal of the
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`pending Petition.
`
`A.
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`PTAB rules provide for dismissal of a pending petition for inter
`partes review without reaching the merits
`To request inter partes review of a patent, “a person who is not the owner of
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`a patent may file with the Office a petition to institute an inter partes review of
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`the patent.”2 35 U.S.C. § 311. Thereafter, if reaching the merits, the Board either
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`1 In Sections C. and D., infra, Petitioner addresses the Board’s alternative
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`authorization to file a motion to terminate “if the parties seek termination
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`pursuant to a settlement,” and the Board’s corresponding instruction to file a
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`true copy of the settlement agreement with any such motion.
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`2 Unless indicated, emphases in quotes throughout this motion are added.
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`2
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`
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`grants the petition, which yields institution of an inter partes review, or denies the
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`petition, which results in non-institution of an inter partes review. In rendering its
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`decision on institution, the Board evaluates “whether the information presented in
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`the petition filed under section 311 and any response filed under section 313 shows
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`that there is a reasonable likelihood that the petitioner would prevail with respect to
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`at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`Notably, prior to such a decision on institution, no inter partes review has
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`commenced. See, e.g., 35 U.S.C. §§ 311-313. Statutes addressing pre-institution
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`procedures therefore consistently refer to “the petition” rather than an “inter partes
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`review” proceeding. Id.; see also Intellectual Ventures II LLC v. JPMorgan Chase
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`and Co., 781 F.3d 1372, 1376 (“The AIA differentiates between a petition for a
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`CBMR proceeding (which a party files) and the act of instituting such a proceeding
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`(which the Director is authorized to do)”). This stands to reason, as its name –
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`institution decision – confirms that inter partes review does not commence until a
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`decision to institute has been rendered. See also institution, Black's Law
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`Dictionary (8th ed. 2004) (“The commencement of something, such as a civil or
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`criminal action”).
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`With respect to a petition, therefore, the PTAB rules aptly and affirmatively
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`proscribe that the Board may reach the merits of the decision through grant or
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`denial, in the manner noted above. And importantly, the PTAB rules recognize
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`3
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`
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`one more option—dismissal. 37 C.F.R. 42.71 (“the Board ... may grant, deny, or
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`dismiss any petition or motion”); see also, e.g., 37 CFR 42.12(b)(8) (describing
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`sanctions including “dismissal of the petition”); 37 CFR 42.106(b) (in the case of
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`an incomplete petition, “the Office will dismiss the petition if the deficiency in the
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`petition is not corrected within one month from the notice of an incomplete
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`petition”).
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`In contrast, no rule or statute authorizes the Board to “dismiss” a trial on an
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`instituted inter partes review. Instead, “the Board may terminate a trial” or an
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`“instituted” inter partes review. 37 C.F.R. 42.72; 35 U.S.C. § 317(a); see also,
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`e.g., 37 C.F.R. 42.2 (a “trial” is “a contested case instituted by the Board based
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`upon a petition”). And as noted in section C., infra, no rule or statute authorizes
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`the Board to “terminate” a petition. Thus, read together, authority is offered for
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`dismissal (of a petition) pending decision on the petition’s institution merits (i.e.,
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`without granting or denying it), and for termination (of trial) following a decision
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`on the petition’s institution merits. See 37 C.F.R. 42.71; 37 C.F.R. 42.72; 35
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`U.S.C. § 317(a).
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`In the present case, a Petition requesting inter partes review awaits a Board
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`decision on institution. The Board has yet to decide whether to grant the
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`Petition—and thus institute trial—or deny the Petition. Under the rules, the proper
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`mechanism for dispatching this pending Petition prior to an institution decision by
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`4
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`
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`the Board is dismissal. See 37 C.F.R. 42.71; 37 C.F.R. 42.72; 35 U.S.C. § 317(a);
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`Apple Inc. v. Ericsson Inc. et al., IPR2015-01904 Pap. 7, 2 (PTAB Jan. 29, 2016)
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`(granting petitioner’s unopposed motion to dismiss twelve petitions where “Patent
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`Owner has not filed a preliminary response, and we have not considered the merits
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`of the Petitions”).
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`B. Good cause justifies dismissal of the present Petition
`Consistent with 37. C.F.R. § 42.71(a), the Board has recognized that
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`dismissal of pre-institution petitions is available to petitioners upon a showing of
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`good cause, and the Board has recognized through its decisions various instances
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`of good cause sufficient to justify dismissal. See, e.g., Intel Corp. v. Tela
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`Innovations, Inc., IPR2019-01257 Pap. 16, 3 (PTAB Jan. 2, 2020); Apple Inc. v.
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`Ericsson Inc. et al., IPR2015-01904 Pap. 7, 2 (PTAB Jan. 29, 2016); Staylinked
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`Corp. v. Ivanti, Inc., IPR2021-00022 Pap. 10 (PTAB Feb. 4, 2021) (granting
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`petitioner's unopposed motion and noting the petitioner's ability to refile at a later
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`date due to lack of co-pending litigation); World Programming LTD. v. SAS
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`Institute, Inc., IPR2019-01457 Pap. 19, 2-3 (PTAB Dec. 27, 2019) (granting
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`“unopposed motion to dismiss the Petition and terminate the proceeding more than
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`two months before the statutory deadline for institution”); Huawei Techs. Co. LTD.
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`v. Harris Global Communications, Inc., IPR2019-01512 Pap. 8, 1-2 (PTAB
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`Dec. 27, 2019) (granting petitioner’s unopposed motion to dismiss where “[b]oth
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`5
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`Petitioner and Patent Owner contend there is good cause to terminate the
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`proceedings because it will preserve the resources of the Board and the parties”);
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`Samsung Electronics Co. et al. v. Nvidia Corp., IPR2015-01270 Pap. 11, 3-4
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`(PTAB Dec. 9, 2015) (granting petitioner’s motion to dismiss, even despite
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`opposition by patent owner, “to promote efficiency and minimize unnecessary
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`costs”); Apple Inc. v. Pinn, Inc., IPR2021-00220 Pap. 10 (PTAB Mar. 19, 2021).
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`In the instant case, good cause exists, consistent with Board precedent.
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`The parties have settled their dispute, a preliminary response to the Petition
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`has not been filed, and a decision on institution of IPR2021-00446 has not yet been
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`rendered. As such, granting Petitioner’s unopposed motion to dismiss the instant
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`Petition at this early juncture would serve to preserve the Board’s and parties’
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`resources and promote a speedy and inexpensive resolution. See Samsung v.
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`Nvidia, IPR2015-01270 Pap. 11, 3. Indeed, dismissing the Petition now, before
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`any decision on the merits, will promote the Board’s objective of achieving “just,
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`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b)
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`(2018); World Programming LTD. v. SAS Institute, Inc., IPR2019-01457 Pap. 19,
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`2; see also Staylinked Corp. v. Ivanti, Inc., IPR2021-00022 Pap. 10 (PTAB Feb. 4,
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`2021) (granting petitioner’s unopposed motion and noting the petitioner’s ability to
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`refile at a later date due to lack of co-pending litigation).
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`6
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`
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`
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`C. No statute or rule provides a basis for “terminating” a petition for
`inter partes review that has not yet been instituted
`As noted above, the Board’s response to Petitioner’s request to file an
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`unopposed motion to dismiss alternatively authorized filing a joint motion to
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`terminate. In particular, the Board stated that “Petitioner is authorized to file either
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`a motion to dismiss or, if the parties seek termination pursuant to a settlement, a
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`joint motion to terminate.” The next sentence, quoting from 37 C.F.R. § 42.74,
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`adds that “[i]n any such motion, counsel must specifically confirm that ‘[a]ny
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`agreement or understanding between the parties made in connection with, or in
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`contemplation of, the termination of [the instant] proceeding [is] in writing and a
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`true copy [has been or is being] filed with the Board’ with the motion.”
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`Notably, the language of 37 C.F.R. § 42.74 refers to “termination of a
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`proceeding” and “termination of the trial,” as opposed to dismissal of a petition:
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`“[a]ny agreement or understanding between the parties made in connection with, or
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`in contemplation of, the termination of a proceeding shall be in writing and a true
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`copy shall be filed with the Board before the termination of the trial.”
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`Accordingly, Petitioner understands the Board’s instruction to file a true copy of
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`the settlement agreement with “any such motion” to refer to the authorized “joint
`
`motion to terminate,” as opposed to the authorized, presently-filed motion to
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`dismiss.
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`7
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`Petitioner’s understanding is consistent with the absence of any reference to
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`dismissal within the entirety of 37 C.F.R. § 42.74. See 37 C.F.R. § 42.74. And
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`this understanding comports with termination being made available through 35
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`U.S.C. § 317(a) for only the limited class of inter partes reviews “instituted under
`
`this chapter.” 35 U.S.C. § 317(a). Indeed, there exists neither statutory nor rule-
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`based authority for termination prior to institution of a petition. See also 37 C.F.R.
`
`§ 42.74.
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`The statutory procedure for termination of an inter partes review is defined
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`by 35 U.S.C. § 317(a), which states, in relevant part:
`
`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.
`
`The plain language of 317(a) makes clear that the statutory option for
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`“termination” is available to address only the limited class of “instituted” inter
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`partes review proceedings, and does not describe an analogous mechanism for
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`dispatching a petition for inter partes review that awaits decision on institution.
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`See id. The present case involves such a Petition, and thus termination under
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`317(a) is not applicable.
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`8
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`
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`Similar to 35 U.S.C. § 317(a), the PTAB rules specify that the Board “may
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`terminate a trial without rendering a final written decision” (37 C.F.R. 42.72), and
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`define a “trial” as “a contested case instituted by the Board based upon a petition”
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`(37 C.F.R. 42.2). The plain language of 37 C.F.R. 42.72 is thus unambiguous in
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`providing authority for “termination” of only “trials” (i.e., instituted inter partes
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`review proceedings), without providing authority via an analogous mechanism for
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`dispatching a petition for inter partes review that awaits decision on institution.
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`See id. The present case involves such a Petition, and thus termination is not
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`available, even if otherwise proscribed by 37 C.F.R. 42.72.
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`Similarly, no basis exists in PTAB precedent for termination of non-
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`instituted inter partes review proceedings, as no cases on this subject have been
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`designated “precedential” (or even “informative”) by the Office.
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`Accordingly, the parties have not jointly sought to terminate; rather,
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`consistent with the Board’s authorization, Petitioner hereby submits this
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`unopposed motion to dismiss.
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`D. Even if there were a basis for terminating a petition that has not
`yet been instituted, the parties would not be obligated to a file a
`copy of a settlement agreement related to such termination
`To the extent the Board finds that a basis exists in the PTAB rules for
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`termination of a non-instituted proceeding, such termination would still not
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`obligate the parties to file a “true and correct copy” of a settlement agreement
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`9
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`related to the termination under 42.74(b), because the 42.74(b) states that this
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`obligation must be fulfilled “before the termination of the trial.” 37 C.F.R.
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`42.74(b). As no “trial” exists for a non-instituted proceeding, such termination will
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`never occur, so the parties are not obligated to file a copy of the settlement
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`agreement. See id.; 37 C.F.R. 42.2 (defining a “trial” as “a contested case
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`instituted by the Board based upon a petition” that “begins with a written decision
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`notifying the petitioner and patent owner of the institution of the trial”).
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`E. Conclusion
`For the foregoing reasons, Petitioner respectfully requests dismissal of the
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`instant Petition.
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`10
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`Date: May 19, 2021
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`Respectfully submitted,
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`/s/ Todd M. Friedman
`Todd M. Friedman (Reg. No. 42,559)
`todd.friedman@kirkland.com
`James E. Marina (Reg. No. 41,969)
`james.marina@kirkland.com
`Jon R. Carter (Reg. No. 75,145)
`jon.carter@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`
`Bao Nguyen (Reg. No. 46,062)
`bnguyen@kirkland.com
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94194
`Telephone: (415) 439-1400
`Facsimile: (415) 439-1500
`
`Kevin Bendix (Reg. No. 67,164)
`kevin.bendix@kirkland.com
`KIRKLAND & ELLIS LLP
`555 South Flower Street, Suite 3700
`Los Angeles, CA 90071
`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
`
`Attorneys For Petitioner Samsung
`Electronics Co., Ltd.
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`11
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document was
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`served on May 19, 2021, through the Patent Review Processing System, as well as
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`by e-mailing copies to:
`
`Douglas L. Bridges
`Noroozi PC
`4204 Rochester Road
`Mobile, AL 36608
`doug@noroozipc.com
`Kayvan B. Noroozi
`Jason Wejnert
`Noroozi PC
`11601 Wilshire Blvd., Suite 2170
`Los Angeles, CA 90025
`kayvan@noroozipc.com
`jason@noroozipc.com
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`/s/ Todd M. Friedman
`Todd M. Friedman (No. 42,559)
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`1
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