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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND GOOGLE LLC,
`Petitioner
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`V.
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`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`
`_________________
`
` IPR2022-00284
`Patent No. 9,997,962
`___________________
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`
`
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` PETITIONER GOOGLE LLC AND PATENT OWNER’S JOINT MOTION
`TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Google LLC
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`Case No. IPR2022-00284
`Patent No. 9,997,962
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`
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`(“Petitioner”) and Patent Owner Scramoge Technology Ltd. (“Patent Owner”)
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`(collectively, “the Parties”) jointly request termination of this proceeding. The
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`Parties have entered into a written confidential settlement agreement that settles all
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`disputes between them, including those relating to this proceeding and the related
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`district court actions, Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-
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`00616 (W.D. Tex.) and Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-
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`01138 (W.D. Tex.), which were dismissed with prejudice on August 24, 2022.
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`Pursuant to 37 C.F.R. § 42.74, a true copy of the Parties’ settlement agreement
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`(including any other related agreement between the Parties) has been filed as
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`Exhibit 1030. This Joint Motion was authorized by the Board pursuant to e-mail
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`correspondence on August 31, 2022. Petitioner Samsung Electronics, Ltd. and
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`Samsung Electronics America, Inc. filed a motion to terminate with respect to the
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`Samsung entities on August 15, 2022. The Board granted that motion on August
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`29, 2022. (Paper 16.) Therefore, Google LLC is the only remaining Petitioner in
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`this proceeding.
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`Pursuant to 37 C.F.R. §§ 42.5 and 42.72, the Board may terminate a trial
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`without rendering a final written decision, where appropriate, including pursuant to
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`a joint request under 35 U.S.C. §§ 317(a) or 327(a). See Winplus N. Am., Inc. v.
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`Pilot, Inc., IPR2018-00488, Paper 12 (P.T.A.B. Oct. 24, 2018). “There are strong
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`1
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`public policy reasons to favor settlement between the parties to a proceeding. . . .
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`Case No. IPR2022-00284
`Patent No. 9,997,962
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`The Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding.”
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`PTAB Consolidated Trial Practice Guide at 86 (November 2019).
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`Trial was recently instituted on June 22, 2022. The proceeding is therefore
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`in a preliminary stage and the Board has not finally decided the merits.
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`Accordingly, it is appropriate for the Board to exercise its authority pursuant to 37
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`C.F.R. § 42.71 to terminate this proceeding in view of the settlement entered into
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`between Petitioner and Patent Owner. By granting the present motion, the Board
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`and the Parties can conserve resources. Additionally, maintaining the proceeding
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`would discourage further settlements, as patent owners in similar situations would
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`have a strong disincentive to settle if they perceived that an inter partes review
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`would continue regardless of a settlement.
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`As required by statute and as directed by the Board, the parties are filing
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`concurrently herewith, as a separate submission, a Joint Request to Treat
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`Settlement Agreement as Business Confidential and to Keep Separate, pursuant to
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`35 U.S.C. § 317(b), along with the true copy of the written settlement agreement,
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`which includes all agreements between the Parties related to this proceeding (Ex.
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`1030). The Parties request that the settlement agreement be treated as business
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`confidential information and be kept separate from the files of the involved patent,
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`and be made available only to Federal Government agencies on written request, or
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`Case No. IPR2022-00284
`Patent No. 9,997,962
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`to any person on showing of good cause under 35 U.S.C. § 317 and 37 C.F.R. §
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`42.74(c). The Parties certify that there are no other collateral agreements or
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`understandings, oral or written, between the parties made in connection with, or in
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`contemplation of, the termination of this proceeding.
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`Accordingly, the Parties respectfully request that that the Board grant the
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`Respectfully submitted,
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`/Brett Cooper/
`Brett Cooper
`Counsel for Patent Owner
`Reg. No. 55,085
`Russ, August & Kabat
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`Tel.: 310-826-7474
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`Parties’ Joint Motion to Terminate.
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`Dated: September 1, 2022
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`/Naveen Modi/
`Naveen Modi
`Counsel for Petitioner
`Reg. No. 46,224
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, DC 20036
`Phone: 202-551-1700
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`3
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`Case No. IPR2022-00284
`Patent No. 9,997,962
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 1, 2022, a copy of the foregoing
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`Petitioner Google LLC and Patent Owner’s Joint Motion to Terminate Pursuant To
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`35 U.S.C. § 317 was served by electronic means upon the following:
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`
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`Brett Cooper (bcooper@raklaw.com)
`Reza Mirzaie (rmirzaie@raklaw.com)
`Russ, August & Kabat
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
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`rak_scramoge@raklaw.com
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`Respectfully submitted,
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`Dated: September 1, 2022
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`By: /Naveen Modi/
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` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
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