UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioners,
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`v.
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`RFCYBER CORP.,
`Patent Owner.
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`Case IPR2021-00981
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`U.S. Patent No. 9,240,009
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`JOINT MOTION TO TERMINATE PROCEEDINGS
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioners,
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`v.
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`RFCYBER CORP.,
`Patent Owner.
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`Case IPR2021-00981
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`U.S. Patent No. 9,240,009
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`JOINT MOTION TO TERMINATE PROCEEDINGS
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`LIST OF EXHIBITS
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`Exhibit No. Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`U.S. Patent No. U.S. 9,240,009 (the “’009 patent”)
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`File History of U.S. Patent No. 8,118,218 (“’218 FH”)
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`Declaration of Gerald Smith Regarding Invalidity of U.S. Patent
`No. 8,118,218
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`U.S. Patent Application Publication No. 2006/0165060 (“Dua”)
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`Defendants’ Contingent Election Regarding Invalidity Defenses,
`RFCyber Corp. v. Samsung Electronics Co., Ltd. et al., 2:20-cv-
`00335 (E.D. Tex.) (Dkt. 60) (filed June 8, 2021).
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`GlobalPlatform Card Specification Version 2.1.1 (March 2003)
`(“GlobalPlatform” or “GP”)
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`File History of U.S. Patent No. 8,448,855 (“’855 FH”)
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`Smart Card Handbook Third Edition, by Wolfgang Rankl and
`Wolfgang Effing (2003)
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`Common Electronic Purse Specifications, Technical
`Specification Version 2.3 (March 2001)
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`SmartMX, P5CD009 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
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`SmartMX, P5CD036 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
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`SmartMX, P5CT072 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.3 – 4 October
`2004)
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`Mifare proX, P8RF6016 Secure Dual Interface Smart Card IC,
`Short Form Specification (Revision 1.0 – November 2003)
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`Exhibit No. Description
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`ETSI TS 102 226 V6.12.0 (2005-09), “Smart cards; Remote
`APDU structure for UICC based applications (Release 6)”
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`Wenninger et al., “The Electronic Purse,” in Current Issues in
`Economics and Finance, Volume 1, Number 1, Federal Reserve
`Bank of New York (April 1995).
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`RESERVED
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`Excerpt from Cambridge Business English Dictionary
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`U.S. Patent No. 6,983,882
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`RFID Handbook – Radio-Frequency Identification Fundamentals
`and Applications, Klaus Finkenzeller, John Wiley & Son, Ltd.
`(1999)
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`RESERVED
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`ISO/IEC 7816-4:1995 Interindustry commands for interchange
`(May 1995)
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`U.S. Government General Services Administration (GSA) Smart
`Card Handbook (FEB 2004)
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`“Here Comes The Wallet Phone,” IEEE Spectrum, November
`2005
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`File History of U.S. Patent No. 9,189,787 (“’787 FH”)
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`RESERVED
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`RFC 3261, SIP: Session Initiation Protocol, The Internet Society
`(June 2002).
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`RESERVED
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`RESERVED
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`RESERVED
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`ii
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`Exhibit No. Description
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`1040
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`1041
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`1042
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`1043
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`1044
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`1045
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`1046
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`RESERVED
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`RESERVED
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`RESERVED
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`RESERVED
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`RESERVED
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`RESERVED
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`RESERVED
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`RESERVED
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`RESERVED
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`U.S. Patent Application Publication No. 2006/0196931
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`Declaration of Sylvia Hall-Ellis, Ph.D.
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`U.S. Patent Application Publication No. 2006/0174352
`(“Thibadeau”)
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`File history of U.S. Patent No. 9,240,009 (“’009 FH”)
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`U.S. Patent No. 9,189,787
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`Plaintiff RFCyber’s Election of Asserted Claims to Defendants
`Google LLC, Samsung Electronics Co. Ltd., and Samsung
`Electronics America, Inc., Case Nos. 2:20-cv-00274-JRG and
`2:20-cv-00335-JRG, dated September 15, 2021
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`Plaintiff RFCyber’s Final Election of Asserted Claims to
`Defendants Samsung Electronics Co. Ltd., and Samsung
`Electronics America, Inc., Case Nos. 2:20-cv-00274-JRG and
`2:20-cv-00335-JRG, dated October 11, 2021
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`Defendant Samsung Electronics Co. Ltd.’s, and Samsung
`Electronics America, Inc.’s Motion to Strike the Priority Date
`iii
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`Exhibit No. Description
`Set Forth in Plaintiff’s Interrogatory Responses, Case Nos. 2:20-
`cv-00274-JRG and 2:20-cv-00335-JRG, dated October 6, 2021
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`1047
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`Confidential settlement agreement between Samsung and
`RFCyber
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`iv
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioners Samsung Electronics America,
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`Inc. and Samsung Electronics Co., Ltd. (“Petitioners”) and Patent Owner RFCyber
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`Corp. (“Patent Owner”) jointly request that this inter partes review proceeding
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`involving U.S. Patent No. 9,240,009 (“the ’009 patent”) be terminated based on an
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`agreement between Petitioners and Patent Owner (“the Parties”).
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`Petitioners and Patent Owner have settled their dispute regarding the ’009
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`patent, including both this proceeding and Patent Owner’s assertion of the ’009
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`Patent in the related district court litigations, RFCyber Corp. v. Google LLC and
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`Google Payment Corp., Case No. 2:20-cv-00274-JRG (E.D. Tex.) (Lead Case) and
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`RFCyber Corp. v. Samsung Electronics Co., Ltd. et al., Case No. 2:20-cv-00335-
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`JRG (E.D. Tex.) (Member case). The Parties do not anticipate any further litigation
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`between them concerning the ’009 patent.
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`II. REASONS FOR GRANTING THE MOTION
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement between parties made in connection with, or in
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`contemplation of, the termination of the proceeding, unless the Board has already
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`decided the merits of the proceeding. See, e.g., Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized filing of the
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`instant motion on March 29, 2022. Guidance as to the content of a motion to
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`terminate is provided in IPR2013-00428, Paper No. 56. There, the Board indicated
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`that a joint motion, such as this one, should (a) include a brief explanation as to why
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`termination is appropriate; (b) identify all parties in any related litigation involving
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`the patent at issue; (c) identify any related proceedings currently before the Office;
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`and (d) discuss specifically the current status of each such related litigation or
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`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
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`motion satisfies each of the above requirements.
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`A. Brief Explanation of Why Termination is Appropriate
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`Good cause exists to terminate this proceeding because the parties have settled
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`their dispute regarding the ’009 patent and the proceeding is still at an early state.
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`Terminating this proceeding thus serves the interests of judicial economy as well as
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`the mutual interests of the parties.
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`Termination is appropriate because no patent owner response or further papers
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`have been filed, oral argument has not been held, and the Board has not decided the
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`merits of the proceeding, i.e., a final written decision has not been issued. Under 35
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`U.S.C. § 317(a), this proceeding “shall be terminated” because the parties are jointly
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`requesting termination and the Office has not yet “decided the merits of the
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`proceeding before the request for termination is filed.” The Parties have resolved
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`their disputes and executed an agreement which contemplates requesting termination
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`of this proceeding and dismissing the Parties’ related proceeding regarding the ’009
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`2
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`patent in RFCyber Corp. v. Samsung Electronics Co., Ltd. et al., 2:20-cv-00335
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`(E.D. Tex.).
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`B. All Parties in Any Pending Related Litigation Involving the
`Patent at Issue
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`The following litigation is related to the ’009 patent and the Parties:
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` RFCyber Corp. v. Google LLC and Google Payment Corp., Case No.
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`2:20-cv-00274-JRG (E.D. Tex.) (Lead Case) and RFCyber Corp. v.
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`Samsung Electronics Co., Ltd. et al., Case No. 2:20-cv-00335-JRG
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`(E.D. Tex.) (Member case)
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`A joint motion to dismiss was submitted in the above actions on March 25, 2022.
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` The ’009 patent is also the subject of concurrent litigation between Patent
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`Owner and Apple Inc. (“Apple”) in the Western District of Texas: RFCyber Corp.
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`v. Apple Inc., 6:21-cv-00916 (W.D. Tex.) (“the Apple Litigation”). Petitioners are
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`not a party to the Apple Litigation. A complaint was filed September 7, 2021 in the
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`Apple Litigation and the case is currently pending.
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`C. Related Proceedings Currently Before the Office
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`The ’009 patent is the subject of IPR2022-00413 filed by Apple (“the Apple
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`IPR”). The Apple IPR was filed January 14, 2022 and a Motion for Joinder to the
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`present IPR is currently pending before the Board.
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`The Parties submit that none of the above proceedings are cause for the Board
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`to deny the present Motion as they do not involve the present parties and/or are
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`inapplicable to consideration of a motion to terminate.
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`D. Current Status of Each Such Related Litigation or Proceeding
`With Respect to Each Party in the Litigation or Proceeding
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`Sections II.B and II.C above indicate the status of each related litigation or
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`proceeding with respect to each party to the litigation or proceeding.
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`III. AGREEMENT
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
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`agreement made in connection with, or in contemplation of, the termination of the
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`proceeding is in writing, and a true and correct copy is being filed concurrently
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`herewith as Exhibit 1047.1 There are no other agreements, oral or written, between
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`the parties made in connection with, or in contemplation of, the termination of this
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`proceeding. The parties are also filing concurrently herewith a joint request under
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat this agreement as business
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`confidential information and keep it separate from the files of the ’009 patent.
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`1 The agreement is being filed via the Patent Trial and Appeal Board End to End
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`(PTAB E2E) system with access to the “Parties and Board only.”
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`4
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`IV. CONCLUSION
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`For all these reasons, the Parties respectfully request termination of this
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`proceeding.
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`Date: March 29, 2022
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`Respectfully submitted,
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`
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`/Heath J. Briggs/
`
`Heath J. Briggs
`Reg. No. 54,919
`Greenberg Traurig, LLP
`1144 15th St. Suite 3300
`Denver, CO 80202
`Telephone: 303-685-7418
`Facsimile: 303-572-6540
`BriggsH@gtlaw.com
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`Counsel for Petitioner
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`/Vincent J. Rubino/
`
`Vincent J. Rubino, III
`Reg. No. 68,594
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206
`South Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796 Email:
`vrubino@fabricantllp.com
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`Counsel for Patent Owner
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