Trials@uspto.gov
`571-272-7822
`
`
`Paper 10
`Date: August 3, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`IPR2021-00508
`IPR2021-00587
`IPR2021-00509
`IPR2021-00588
`IPR2021-00536
`IPR2021-00613
`IPR2021-00537
`IPR2021-00614
`IPR2021-00539
`IPR2021-00615
`IPR2021-00567
`IPR2021-00643
`IPR2021-00568
`IPR2021-00644
`IPR2021-00569
`IPR2021-00645
`____________
`
`Before MIRIAM L. QUINN, NATHAN A. ENGELS,
`SHEILA F. McSHANE, and JULIET MITCHELL DIRBA, Administrative
`Patent Judges. 2
`
`Opinion for the Board filed per curiam.
`Opinion dissenting filed by QUINN, Administrative Patent Judge.
`
`
`IPR2021-00446
`IPR2021-00447
`IPR2021-00450
`IPR2021-00459
`IPR2021-00460
`IPR2021-00486
`IPR2021-00487
`
`
`IPR2021-00683
`IPR2021-00684
`IPR2021-00685
`IPR2021-00729
`IPR2021-00730
`IPR2021-00731
`IPR2021-007321
`
`
`1 We exercise our discretion to issue a single order to be entered in each of
`the identified proceedings. The parties are not authorized to use this style
`heading in subsequent papers. We do not list the patents at issue in these
`proceedings because this Paper does not address or depend upon the
`substance of any of those patents.
`2 This is not an expanded panel of the Board; rather, the four judges are
`paneled in various groups of three in the identified proceedings.
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`
`ORDER
`Dismissal Prior to Institution of Trial
`37 C.F.R. § 42.71(a)
`
`In an e-mail dated May 14, 2021, the Board authorized Petitioner to
`file unopposed motions to dismiss or terminate these proceedings prior to
`institution. The Board’s e-mail stated that if Petitioner is requesting
`dismissal or termination pursuant to a settlement between the parties, the
`parties should file a copy of any settlement agreements.
`On May 19, 2021, in each proceeding identified above, Petitioner
`filed an Unopposed Motion to Dismiss the Petition for Inter Partes Review
`(collectively the “Motions”). IPR2021-00446, Paper 6. 3 In the Motions,
`Petitioner states that the parties have settled their disputes and that good
`cause exists for dismissal. Id. at 5–6. Petitioner also argues that it should
`not be required to file a copy of the parties’ settlement agreement. Id.
`DISCUSSION
`The first of these proceedings began with a Petition filed on January
`29, 2021. Paper 2; see Paper 3 (Notice of Filing Date Accorded entered
`February 9, 2021). Only a few months later, before the Board issued a
`decision on institution in any of the proceedings, the parties reached a
`settlement, and Petitioner requested dismissals. Paper 6.
`The Board generally has requested that parties file copies of
`settlement agreements when seeking dismissal or termination of a
`proceeding pursuant to a settlement. Where a proceeding has passed the
`
`
`3 In the interest of expediency, we cite only to the papers in IPR2021-
`00446. Similar motions were also filed in each of the other proceedings.
`2
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`institution stage and has entered the trial phase, that requirement arises under
`35 U.S.C. § 317. Section 317 expressly requires that any agreements made
`in connection with termination of an “instituted” inter partes review shall be
`filed with the Office before termination. Section 317 does not apply to
`dismissal or termination of a proceeding prior to institution. See Rules of
`Practice for Trials Before the Patent Trial and Appeal Board and Judicial
`Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48,612,
`48,625 (Aug. 14, 2012) (“35 U.S.C. 135(e), and 317, as amended, and 35
`U.S.C. 327 will govern settlements of Board trial proceedings but do not
`expressly govern pre-institution settlement.”).
`Less clear is 37 C.F.R. § 42.74, which also addresses settlement.
`Section 42.74(b) states: “Any agreement or understanding between the
`parties made in connection with, or in contemplation of, the termination of a
`proceeding shall be in writing and a true copy shall be filed with the Board
`before the termination of the trial.”4 Thus, § 42.74(b) addresses settlement
`and termination of a “proceeding,” requiring that agreements to terminate a
`proceeding must be in writing. Section 42.74(b) also states that a copy of an
`agreement to terminate a proceeding “shall be filed with the Board before
`the termination of the trial.” Although the term “proceeding” includes trial
`and preliminary proceedings, “trial” is defined in 37 C.F.R. § 42.2 as “a
`
`
`4 Relevant to that language, the Definitions in 37 C.F.R. § 42.2 provide that
`“Proceeding means a trial or preliminary proceeding”; “Trial means a
`contested case instituted by the Board [that] begins with a written decision
`notifying the petitioner and patent owner of the institution of the trial”; and
`“Preliminary Proceeding begins with the filing of a petition for instituting a
`trial and ends with a written decision as to whether a trial will be instituted.”
`3
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`contested case instituted by the Board” that “begins with a written decision
`notifying the petitioner and patent owner of the institution of the trial.” As
`such, even though § 42.74(b) uses “proceeding” in the first instance to
`require that settlement agreements be in written form even for proceedings
`in the preliminary, pre-institution stage, in contrast, the language requiring
`parties to file settlement agreements is tied to, and a prerequisite for,
`“termination of the trial.” The second requirement is consistent with § 317.
`Conversely, to read the language requiring parties to file settlement
`agreements to apply to all “proceedings” would read out the language
`“before termination of the trial” from the Rule.
`In further contrast to “termination of the trial,” the Board’s regulations
`permit “dismissal” of a petition. Specifically, dismissal is one of three
`possible outcomes provided under 37 C.F.R. § 42.71(a): “The Board . . .
`may grant, deny, or dismiss any petition . . . .” No statute or regulation
`addresses settlement agreements in conjunction with “dismissals” of a
`petition.
`Thus, although the Board has generally required parties to file
`settlement agreements without regard to the stage of the proceeding, the
`applicable statutes and regulations make a distinction: for instituted
`proceedings the statutes and regulations specifically require parties to file
`copies of written settlement agreements; for preliminary proceedings, the
`regulations provide for “dismissal” of a petition without specifically
`requiring that parties file settlement agreements. Accordingly, because there
`are no explicit provisions in the statutes or regulations that settlement
`
`4
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`agreements to be filed in pre-institution dismissals, we decline to impose the
`requirement here.
`Petitioner has shown good cause for dismissal of its Petitions. The
`parties have settled their dispute, the proceedings are early in the preliminary
`stages, Patent Owner has not filed any preliminary responses, and the Board
`has not issued any decisions or otherwise invested in the merits of these
`proceedings. Dismissing the Petitions at this stage promotes the Board’s
`objective of achieving “just, speedy, and inexpensive resolution of every
`proceeding.” 37 C.F.R. § 42.1(b). It also facilitates settlement. See PTAB
`Consolidated Trial Practice Guide 86 (Nov. 2019)5 (“There are strong public
`policy reasons to favor settlement between the parties to a proceeding.”).
`Accordingly, we grant Petitioner’s Unopposed Motion to Dismiss the
`Petition for Inter Partes Review in each of these proceedings. This Order
`does not constitute a final written decision under 35 U.S.C. § 318(a).
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Unopposed Motion to Dismiss Petition
`for Inter Partes Review in each of these proceedings is granted, the Petition
`in each of these proceedings is dismissed, and the proceedings are
`terminated.
`
`
`
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`5
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`
`QUINN, Administrative Patent Judge, dissenting.
`
`
`I respectfully dissent from the majority’s decision dismissing the
`instant Petitions because the majority fails to require the parties to file the
`settlement agreement.
`The rules of the Board provide a single rule expressly authorizing
`terminations without rendering a final written decision: 37 C.F.R. § 42.72.
`That rule, however, refers to terminating a “trial,” which the majority
`correctly concludes refers to an instituted proceeding. Thus, Rule 72 does
`not apply to the circumstances we have here—a request to terminate a trial
`before institution due to settlement of the parties.
`Rule 42.73(b) is another Board Rule that has been applied to
`terminations, but does not apply here. Rule 42.73(b) authorizes the Board to
`terminate a proceeding by rendering a “judgment.” Specifically, 37 C.F.R.
`§ 42.73(b) allows for a party to “request judgment against itself at any time
`during a proceeding.” And the definition of “judgment,” according to the
`
`6
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`Board’s rules, includes “a termination of a proceeding.” Id. § 42.2. Thus,
`under Rule 42.73(b), the Board may enter a final order granting a party’s
`request to dismiss a Petition, which the Board construes as a request for a
`termination. Neither party requests that we terminate this proceeding under
`Rule 42.73(b)—and for good reason. The parties settled their dispute and
`the Board has a settlement-specific rule: Rule 42.74—which the majority
`interprets in a manner that (1) disregards anticompetitive concerns that have
`been part of the history of contested cases at the USPTO for over 50 years;
`(2) rewrites a Board rule that is not ambiguous; and (3) is inconsistent with a
`substantial majority of the Board’s settlement-driven terminations pre-
`institution to date.6
`(1) Anticompetitive Concerns and Contested Cases at USPTO
`The requirement to file the settlement agreement in contested cases at
`the Board reflects a long-standing practice that goes back to interferences.
`Johnston v. Beachy, Interference No. 104,286 (BPAI 2001) (Paper 200)
`
`
`6 The parties or real parties-in-interest to this proceeding are aware (and
`have notice) of the Board’s procedures regarding terminations due to
`settlement pre-institution and the applicability of Rule 74 to those requests
`for termination. See, e.g., Order on Joint Motion to Terminate, Samsung
`Electronics America, Inc. v. Tactile Feedback Tech., IPR2016-00202 (PTAB
`Feb. 23, 2016) (Paper 8) (terminating proceeding pre-institution, and
`acknowledging the filing of the settlement agreement and granting the
`motion to keep the agreement confidential and separate); Decision on Joint
`Motion to Terminate, Telefonaktiebolaget LM Ericsson v. Cellular
`Communications Equipment, IPR2016-01484 (PTAB Jan. 6, 2017) (Paper
`11) (terminating proceeding pre-institution, and acknowledging the filing of
`the settlement agreement and granting the request to keep the agreement
`separate and confidential).
`
`7
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`(precedential). The requirement to file settlement agreements began with the
`enactment of Public Law 87-831, in 1962. 7 Although the law was
`subsequently amended, the essence of the filing requirement remained
`largely unchanged, until 35 U.S.C. § 135(c), the settlement-agreement
`provision in interferences, was replaced by the overhaul to Board
`proceedings under the AIA.
`The impetus for requiring settlement agreements in 1962 is
`documented in the Congressional Record. In connection with the debate on
`whether anticompetitive behavior in Board proceedings could be
`investigated, Congress addressed the USPTO’s role as the depository of the
`settlement agreements so that the Federal Trade Commission and the
`Department of Justice would have easier access to documents germane to
`investigations regarding violations of antitrust laws. 8 The concerns at the
`time were focused on settlements involving pharmaceuticals, but the
`concerns were not unique to that industry. The documented concerns were
`anticompetitive practices between rival private parties in which there would
`be conditions to withdrawing from the contest, and further agreements
`concerning identifying potential licensees and their royalty payments, not to
`mention the restrictive provisions on selling and marketing activities of each
`
`
`7 See Public Law 87-831—Oct. 15, 1962, https://www.govinfo.gov/content/
`pkg/STATUTE-76/pdf/STATUTE-76-Pg958.pdf
`8 See Congressional Record, Senate, October 6, 1962, 22041,
`https://www.govinfo.gov/content/pkg/GPO-CRECB-1962-pt16/pdf/GPO-
`CRECB-1962-pt16-5.pdf (debate on the drug bill that also included the
`settlement filing requirement, which was broadened by the bill that became
`§ 135(c)).
`
`8
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`other. 9 As I understand the history of the Board, the USPTO has
`promulgated an AIA rule (discussed below) that gives effect to its long-
`standing practice of requiring the filing of settlement agreements between
`parties, regardless of whether the contested case is a “preliminary
`proceeding” or a “trial” as defined in Rule 42.2.
`(2) The Statute Versus the Board’s Rule
`The governing statute requires filing of settlement agreements (and
`collateral agreements referred to in those agreements) “made in connection
`with, or in contemplation of, the termination of an inter partes review under
`this section.” 35 U.S.C. § 317(b). Section 317 does not expressly govern
`pre-institution settlement because it refers to “inter partes review.” See
`Rules of Practice for Trials Before the Patent Trial and Appeal Board and
`Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg.
`48,612, 48,625 (Aug. 14, 2012) (stating that “35 U.S.C. 135(e), and 317, as
`amended, and 35 U.S.C. 327 will govern settlements of Board trial
`proceedings but do not expressly govern pre-institution settlement”).
`Section 317, however, does not preclude the Board from requiring the filing
`of pre-institution settlement agreements.
`Indeed, I view the Board’s rule as expressly requiring the filing of
`settlement agreements “between the parties made in connection with, or in
`contemplation of, the termination of a proceeding.” 37 C.F.R. § 42.74(b).
`The Board’s rules define “proceeding” as “a trial or preliminary
`proceeding.” 37 C.F.R. § 42.2. The Rules further state that a “[p]reliminary
`
`
`9 Id. at 22048.
`
`9
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`[p]roceeding begins with the filing of a petition for instituting a trial and
`ends with a written decision as to whether a trial will be instituted.” Id.
`Therefore, I read Rule 42.74(b) as requiring parties who settle before the
`Board issues an institution decision (i.e., during a “preliminary proceeding”)
`to file the settlement agreement when seeking termination of that
`proceeding.
`The unopposed Motion and the majority place undue emphasis on a
`phrase of Rule 42.74(b) without considering the full scope of “proceeding”
`set forth in our Rules. The majority effectively rewrites Rule 42.74(b) to
`read “any agreement or understanding between the parties made in
`connection with, or in contemplation of, the termination of a trial [rather
`than proceeding] shall be made in writing and a true copy shall be filed with
`the Board before the termination of the trial.” This rewritten Rule would
`transform a phrase addressing the timing of when to file the settlement
`agreement (i.e., before the termination of the trial) into a phrase that also
`places conditions on which agreements need to be filed (apparently only
`those agreements that settle an instituted trial). The plain text of Rule
`42.74(b) requires that all agreements made in connection with a proceeding
`need to be filed, regardless of whether the Board has instituted trial. The
`phrase “before the termination of the trial” places limits only on the latest
`possible time at which the parties must file their settlement agreement. In
`plain terms, the latest time at which a party can seek termination of a
`proceeding because they have agreed to a settlement is before the end of the
`trial. The timing of the filing, in my view, is not a “condition” limiting the
`effect of Rule 42.74(b) only to the trial period—it simply requires that the
`
`10
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`written agreement needs to be filed before we terminate, the latest of which
`is before the proceeding ends.
`Therefore, I respectfully disagree with my colleagues because I
`conclude that Rule 42.74(b) requires the filing of all settlement agreements
`made before we terminate a proceeding.
`(3) Inconsistency at the Board
`The Rule in question is a procedural rule that the USPTO promulgated
`under its rulemaking authority in 2012. Since then, and until very recently,
`the Board has consistently required the filing of pre-institution settlement
`agreements in connection with termination requests. I could cite a robust
`number of AIA proceedings that have been terminated since 2013—starting
`as far as I know with IPR2013-00130—all of which were in the pre-
`institution stage and were terminated due to settlement, and, thus, required
`the filing of the settlement agreement. The majority decision runs contrary
`to that consistent application of Rule 42.74(b) to date. Although recently, a
`few panels have granted requests for termination before institution due to
`settlement without requiring the parties to file the settlement agreement,
`those decisions do not analyze Rule 42.74(b) or whether such a ruling is
`consistent with our prior application of that Rule. Such deviations in our
`procedural jurisprudence create inconsistency in our decision-making and
`have the potential to confuse stakeholders and the public-at-large. Tasked,
`however, with the mere application of the Rules to the facts of each case
`(e.g., Administrative Patent Judges are not tasked to make policy for the
`Board), I would prefer to handle this matter in a manner that is consistent
`with our long-standing practice and the express language of Rule 42.74(b).
`
`11
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`And I am not aware of any policy or directive to the contrary. Therefore, I
`remain a servant to the body of consistent application of the Rules and the
`interpretation of the Rule as stated above.
`Accordingly, I respectfully dissent from the majority’s decision
`because I would terminate the proceeding only upon the filing of the written
`settlement agreement.
`
`
`
`
`12
`
`
`

`

`IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
`-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
`-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
`-00729, -00730, -00731, -00732
`
`FOR PETITIONER:
`
`Todd Friedman
`James Marina
`Bao Nguyen
`Kevin Bendix
`Jon Carter
`KIRKLAND & ELLIS LLP
`todd.friedman@kirkland.com
`james.marina@kirkland.com
`bnguyen@kirkland.com
`kevin.bendix@kirkland.com
`carterj@kirkland.com
`
`FOR PATENT OWNER:
`
`Douglas Bridges
`NOROOZI PC
`doug@noroozipc.com
`
`
`
`13
`
`
`