Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 16
` Entered: August 29, 2022
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE LLC,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`____________
`
`IPR2022-00284 (Patent 9,997,962 B2)
` IPR2022-00385 (Patent 9,843,215 B2)1
`____________
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, BRIAN J. McNAMARA,
`and AARON W. MOORE, Administrative Patent Judges.2
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`as to Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 This Order addresses the same issue for the above-identified proceedings.
`2 This is not an expanded panel. Judges Lee, Easthom, and Moore are the
`panel for IPR2022-00284. Judges Lee, Easthom, and McNamara are the
`panel for IPR2022-00385.
`
`
`
`
`571.272.7822
`
`
` Paper No. 16
` Entered: August 29, 2022
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE LLC,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`____________
`
`IPR2022-00284 (Patent 9,997,962 B2)
` IPR2022-00385 (Patent 9,843,215 B2)1
`____________
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, BRIAN J. McNAMARA,
`and AARON W. MOORE, Administrative Patent Judges.2
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`as to Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 This Order addresses the same issue for the above-identified proceedings.
`2 This is not an expanded panel. Judges Lee, Easthom, and Moore are the
`panel for IPR2022-00284. Judges Lee, Easthom, and McNamara are the
`panel for IPR2022-00385.
`
`
`
`
`
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`INTRODUCTION
`I.
`On August 15, 2022, with the Board’s authorization, Petitioner
`Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
`(collectively “Samsung”) and Patent Owner Scramoge Technology Ltd.
`(“Patent Owner”) filed a Joint Motion to Terminate (“Joint Motion”) with
`respect to Samsung in each of the above-identified proceedings due to a
`settlement. Paper 14.3 With the Joint Motion, Samsung and Patent Owner
`filed, in each of the above-identified proceedings, a copy of their Patent
`License Agreement (Ex. 1028) and their Escrow Agreement (Ex. 1029)
`(collectively “Settlement Agreement”) that resolves the disputes related to
`the above-identified proceedings. Joint Motion 1. Samsung and Patent
`Owner also filed, in each of the above-identified proceedings, a Joint
`Request to Keep Separate (“Joint Request”) that requests the Board to treat
`the Settlement Agreement as business confidential information and to keep it
`separate from the publicly available files in the above-identified
`proceedings. Paper 15, 1.
`
`II. DISCUSSION
`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 the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.”
`Prior to termination, the parties must file true copies of “[a]ny agreement or
`understanding between the patent owner and a petitioner, including any
`
`
`3 References are to Papers and Exhibits in IPR2022-00284; however,
`reference to Papers 14 and 15 include Papers 16 and 17 in IPR2022-00385,
`respectively. Reference to Exhibits 1028 and 1029 includes Exhibits 1033
`and 1034 in IPR2022-00385, respectively.
`
`2
`
`
`
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`collateral agreements referred to in such agreement or understanding, made
`in connection with, or in contemplation of, the termination of an inter partes
`review.” 35 U.S.C. § 317(b).
`In the Joint Motion, Samsung and Patent Owner represent that they
`have reached an agreement to seek termination of the above-identified inter
`partes review proceedings under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74.
`Joint Motion 1. Samsung and Patent Owner indicate that “a copy of the
`settlement agreement that resolves the disputes in the [above-identified]
`inter partes [reviews] relating to [the above-identified patents] as between
`Scramoge and Samsung is filed herewith as an exhibit.” Id. Samsung and
`Patent Owner also certify “[t]here are no other collateral agreements
`between the parties made in connection with, or in contemplation of, the
`termination sought.” Id. The Joint Motion and Settlement Agreement
`collectively show that the parties represent that they filed all agreements
`between themselves, including all collateral agreements referred to, made in
`connection with, or in contemplation of, the termination of this proceeding,
`as 35 U.S.C. § 317(b) requires.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)4;
`see also 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The Board has not decided
`the merits of these proceedings. Accordingly, under the circumstances
`present here, it is appropriate to terminate the instant proceedings as to
`Samsung. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72(a, b), 42.74. The
`grant of the Joint Motion will not result in termination of the instant inter
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`partes reviews, however, because Google LLC remains as Petitioner.
`Further, we find that the Settlement Agreement contains confidential
`business information regarding the terms of settlement. We determine that
`good cause exists to treat the Settlement Agreement between Samsung and
`Patent Owner as business confidential information and to keep it separate
`from the files of the patents in the above-identified proceedings pursuant to
`37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`For the reasons discussed above, it is
`ORDERED that the Joint Motion with respect to Samsung is granted
`and these proceedings are terminated only as to Samsung;
`FURTHER ORDERED that Google LLC will remain as Petitioner in
`each of these proceedings, and each of the above-identified proceedings will
`continue;
`FURTHER ORDERED that the Joint Request is granted, and that the
`Settlement Agreement in each case shall be kept separate from the respective
`files of U.S. Patent Nos. 9,997,962 B2 and 9,843,215 B2, and made
`available only to Federal Government agencies on written request, or to any
`person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c); and
`FURTHER ORDERED that the caption for each of the above-
`identified proceedings is modified as set forth on the attached Exhibit. The
`remaining parties are directed to use this caption in all further filings.
`
`
`4
`
`
`
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`
`
`
`For PETITIONER:
`
`John Kappos
`Cameron Westin
`O’MELVENY & MYERS LLP
`jkappos@omm.com
`cwestin@omm.com
`
`
`Naveen Modi
`Joseph Palys
`Paul Anderson
`Phillip Citroen
`Quadeer Ahmed
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`paulanderson@paulhastings.com
`phillipcitroen@paulhastings.com
`quadeerahmed@paulhastings.com
`
`
`For PATENT OWNER:
`
`Brett Cooper
`Reza Mirzaie
`RUSS AUGUST & KABAT
`bcooper@raklaw.com
`rmirzaie@raklaw.com
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`
`EXHIBIT: Sample Case Caption
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`____________
`
`IPR2022-XXXXX
`Patent Y,YYY,YYY B2
`____________
`
`
`6
`
`
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