U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC. and GOOGLE LLC
`Petitioners
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`v.
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`SCRAMOGE TECHNOLOGY LTD.
`Patent Owner.
`______________________________________________
`Case No. IPR2022-00284
`U.S. Patent No. 9,997,962
`______________________________________________
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW WITH
`RESPECT TO PETITIONER SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC. ONLY
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`Petition for Inter Partes Review
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`
`
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC. and GOOGLE LLC
`Petitioners
`
`v.
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`SCRAMOGE TECHNOLOGY LTD.
`Patent Owner.
`______________________________________________
`Case No. IPR2022-00284
`U.S. Patent No. 9,997,962
`______________________________________________
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW WITH
`RESPECT TO PETITIONER SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC. ONLY
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`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`Patent Owner Scramoge Technology Ltd. (“Scramoge”) and Petitioner
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`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
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`(collectively “Samsung”) have reached a settlement. Pursuant to 35 U.S.C. §
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`317(a) and 37 C.F.R. §§ 42.72 and 42.74, the parties jointly request termination of
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`the inter partes review of U.S. Patent No. 9,997,962 (“Patent-in-Suit”), Case
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`IPR2022-00284 with respect to Petitioners Samsung Electronics Co., Ltd. and
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`Samsung Electronics America, Inc. only. The settlement agreement does not
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`extend to Co-Petitioner Google LLC (“Other Petitioner”). The Other Petitioner
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`does not oppose this motion, with the understanding that the inter partes review
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`will continue with respect to the Other Petitioner. The parties were authorized to
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`file this Joint Motion by the Board (via email) on August 9, 2022.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a copy of
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`the settlement agreement that resolves the disputes in the above-captioned inter
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`partes review relating to the Patent-in-Suit as between Scramoge and Samsung is
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`filed herewith as an exhibit. There are no other collateral agreements between the
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`parties made in connection with, or in contemplation of, the termination sought.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Scramoge and
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`Samsung are concurrently filing a Joint Request to Keep Separate, which asks the
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`Board to treat the settlement agreement as business confidential information, and
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`1
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`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`to keep it separate from the files of this proceeding and the files of the Patent-in-
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`Suit.
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`The parties jointly request that the Board terminate the inter partes review of
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`the Patent-in-Suit, Case IPR2022-00284, with respect to Petitioner Samsung only.
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`II. TERMINATION WITH RESPECT TO SAMSUNG IS
`APPROPRIATE
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” This inter partes review is
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`still in its early stages. The Petition was filed on December 7, 2021, and the Board
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`has not yet decided the merits of the proceeding. Accordingly, the Board should
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`terminate with proceeding with respect to Samsung.
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`The lawsuits between Scramoge and Samsung have been dismissed, and
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`Scramoge and Samsung do not contemplate any litigation or proceeding involving
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`the Patent-in-Suit in the foreseeable future.
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`III. NO FUTURE PARTICIPATION BY SAMSUNG
`Samsung will not participate further in this proceeding.
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`IV. CONCLUSION
`Scramoge and Samsung have settled all disputes relating to the Patent-in-
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`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`Suit. That settlement does not extend to the Other Petitioner, but the Other
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`Petitioner does not oppose this motion with the understanding that this inter partes
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`review will continue with respect to the Other Petitioner. This inter partes review
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`is in an early stage, and the Board has not entered a final written decision on the
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`merits in this proceeding. Accordingly, the parties respectfully request that the
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`Board terminate this proceeding with respect to Samsung only.
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`Dated: August 15, 2022
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`Respectfully submitted,
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`/s/ John Kappos
`John Kappos (Reg. No. 37,861)
`Email: jkappos@omm.com
`O’Melveny & Myers LLP
`610 Newport Center Dr., 17th Floor
`Newport Beach, California 92660
`Telephone: (949) 823-6900
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`Attorney for Petitioners
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`/s/ Brett Cooper
`Brett Cooper (Reg. No. 55,085)
`Email: bcooper@raklaw.com
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
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`Attorney for Patent Owner
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`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`CERTIFICATE OF SERVICE
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`The undersigned certifies to 37 C.F.R. §42.6(e) and §42.105 that the above
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`document was served on August 15, 2022 by filing this document through the
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`Patent Trial and Appeal Board End to End system as well as by delivering a copy
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`via electronic mail to the attorneys of record for the Patent Owner:
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`.
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`/s/ John Kappos
`John Kappos (Reg. No. 37,861)
`Email: jkappos@omm.com
`O’Melveny & Myers LLP
`610 Newport Center Dr., 17th Floor
`Newport Beach, California 92660
`Telephone: (949) 823-6900
`Attorney for Petitioners
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