`571-272-7822
`
`Paper 17
`Date: April 11, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`IPR2021-00980 (Patent 9,189,787 B1)
`IPR2021-00981 (Patent 9,240,009 B2)1
`
`Before PATRICK R. SCANLON and KEVIN W. CHERRY,
`Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`1 We exercise our discretion to issue a single Order to be entered in
`each case using a joint caption. The parties are not permitted to use this
`caption. For convenience, we use the Paper and Exhibit numbers from
`IPR2021-00980.
`
`
`
`IPR2021-00980 (Patent 9,189,787 B1)
`IPR2021-00981 (Patent 9,240,009 B2)
`
`
`On March 29, 2022, Samsung Electronics America, Inc. and Samsung
`Electronics Co., Ltd. (“Petitioner”) and RFCyber Corp. (“Patent Owner”)
`filed joint motions to terminate these proceedings pursuant to 35 U.S.C.
`§ 317. Paper 16 (“Mot.”). Each motion was accompanied by a true,
`unredacted copy of a settlement and license agreement (Ex. 1047), and a
`joint request to treat the agreement as business confidential information, to
`be kept separate from the patent file, pursuant to 35 U.S.C. § 317(b)
`(Paper 17).
`The parties represent in their joint motions that they have settled their
`dispute regarding the patents challenged in these inter partes review
`proceedings, as well as the related district court proceedings. Mot. 1. The
`parties state that they “do not anticipate further litigation between them
`concerning the” challenged patents. Id.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” As
`indicated in the Joint Motions, the parties are requesting termination prior to
`oral hearing and prior to the Board’s final written decision. Mot. 2. The
`parties also note that “no patent owner response or further papers have been
`filed.” Id.
`Under the circumstances presented here, we determine that
`termination of the proceedings is appropriate. See Consolidated Trial
`Practice Guide (November 2019)2 at 86 (“The Board expects that a
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2021-00980 (Patent 9,189,787 B1)
`IPR2021-00981 (Patent 9,240,009 B2)
`
`proceeding will terminate after the filing of a settlement agreement, unless
`the Board has already decided the merits of the proceeding.”). Accordingly,
`we grant the parties’ joint motions to terminate.
`We also determine that the parties have complied with the
`requirements of 37 C.F.R. § 42.74(c) to have the settlement and license
`agreement treated as business confidential information and kept separate
`from the patent files of the challenged patents. Thus, we grant the joint
`requests to treat the settlement and license agreement as business
`confidential.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is:
`ORDERED that the joint motions to terminate are granted;
`FURTHER ORDERED that each of these proceedings is terminated;
`
`and
`
`FURTHER ORDERED that the joint requests to treat the settlement
`and license agreement as business confidential information are granted, and
`the settlement and license agreement shall be kept separate from the files of
`U.S. Patent Nos. 9,189,787 and 9,240,009, and be made available only to
`Federal Government agencies on written request, or to any person on a
`showing of good cause, pursuant to 37 C.F.R. § 42.74(c).
`
`3
`
`
`
`IPR2021-00980 (Patent 9,189,787 B1)
`IPR2021-00981 (Patent 9,240,009 B2)
`
`FOR PETITIONER:
`
`Heath J. Briggs
`Andrew R. Sommer
`GREENBERG TRAURIG, LLP
`briggsh@gtlaw.com
`sommera@gtlaw.com
`
`
`FOR PATENT OWNER:
`
`Vincent J. Rubino, III
`Peter Lambrianakos
`Enrique W. Iturralde
`Richard Cowell
`FABRICANT LLP
`vrubino@fabricantllp.com
`plambrianakos@fabricantllp.com
`eiturralde@fabricantllp.com
`rcowell@fabricantllp.com
`
`4
`
`
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