`571.272.7822
`
`
` Paper No. 23
` 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
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`