Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 21
` Entered: September 26, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 This Order addresses the same issue for the above-identified proceedings.
`The parties must obtain prior authorization to use this heading style.
`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. 21
` Entered: September 26, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 This Order addresses the same issue for the above-identified proceedings.
`The parties must obtain prior authorization to use this heading style.
`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 September 1, 2022, with the Board’s authorization, Google LLC
`(“Petitioner”) and Scramoge Technology Ltd. (“Patent Owner”)
`(collectively, “the parties”) filed a Joint Motion to Terminate in each of the
`above-identified proceedings due to settlement of the parties’ disputes.
`Paper 17 (“Joint Motion”).3 With the Joint Motion, the parties filed, in each
`of the above-identified proceedings, a copy of their Settlement Agreement
`(Ex. 1030) that resolves the disputes between the parties related to the
`above-identified proceedings. Joint Motion 1. The parties also filed, in each
`of the above-identified proceedings, a Joint Request to Keep Separate 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 18 (“Joint Request”), 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
`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).
`
`
`3 References are to Papers and Exhibits in IPR2022-00284; however,
`reference to Papers 17 (or Joint Motion) and 18 (or Joint Request) include
`Papers 19 and 20 in IPR2022-00385, respectively. Reference to Exhibit
`1030 (or Settlement Agreement) includes Exhibit 1035 in IPR2022-00385.
`
`2
`
`
`
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`In the Joint Motion, the parties 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. The parties indicate that “a true copy of the Parties’ settlement agreement
`(including any other related agreement between the Parties) has been filed as
`Exhibit 1030.” Id. The parties also certify “[t]here are no other collateral
`agreements or understandings, oral or written, between the parties made in
`connection with, or in contemplation of, the termination of [these
`proceedings].” Id. at 3. 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 these
`proceedings, 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)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, and these proceedings involve no other parties. Accordingly,
`under the circumstances present here, it is appropriate to terminate the
`instant proceedings. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72(a, b),
`42.74.
`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 the parties as
`business confidential information and to keep it separate from the files of the
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`patent 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 is granted and these proceedings are
`terminated; and
`FURTHER ORDERED that the Joint Request is granted, and that the
`Settlement Agreement shall be kept separate from the files of the above-
`listed patents, 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).
`
`4
`
`
`
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`
`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
`
`PATENT OWNER:
`
`Brett Cooper
`Reza Mirzaie
`RUSS, AUGUST & KABAT
`bcooper@raklaw.com
`rmirzaie@raklaw.com
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
