UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`FANTASIA TRADING LLC d/b/a ANKERDIRECT,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`
`
`
`
`
`
`
`
`
`Case IPR2022-00499
`Patent No. 7,825,537
`
`_________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`FANTASIA TRADING LLC d/b/a ANKERDIRECT,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`
`
`
`
`
`
`
`
`
`Case IPR2022-00499
`Patent No. 7,825,537
`
`_________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`EXHIBITS
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`Case IPR2022-00499
`U.S. Patent No. 7,825,537
`
`EX1001
`
`U.S. Patent 7,825,537 to Freer (“the ’537 patent”)
`
`EX1002
`
`Prosecution History of the ’537 patent (Serial No. 12/271,023)
`
`EX1003
`
`Declaration of Thomas Szepesi, Ph.D.
`
`EX1004
`
`U.S. Pub. 2009/0174263 (“Baarman”)
`
`EX1005
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`U.S. Pub. 2007/0279002 (“Partovi-002”)
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`EX1006
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`U.S. Pub. 2009/0096413 (“Partovi-413”)
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`EX1007
`
`U.S. Patent 7,211,986 (“Flowerdew”)
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`EX1008
`
`U.S. Patent 6,825,620 (“Kuennen”)
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`EX1009
`
`U.S. Prov. App. Serial No. 61/019,411 (“’411 Provisional”)
`
`EX1010
`
`U.S. Pub. 2004/0218406 (“Jang”)
`
`EX1011
`
`Complaint for Patent Infringement, Scramoge Technology Ltd. v.
`Anker Innovations Ltd., Case No. 5:21-cv-01712 (C.D. Cal.) (October
`8, 2021)
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`EX1012
`
`U.S. Pub. 2008/0079392 (“Baarman-392”)
`
`EX1013
`
`U.S. Patent 5,600,225 (“Goto”)
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`EX1014
`
`EX1015
`
`
`
`Kim et al., A Contactless Power Supply for Photovoltaic Power
`Generation System, 2008 IEEE Applied Power Electronics
`Conference (pp. 1910-13 in the APEC 2008 Proceedings)
`
`Severns et al., MODERN DC-TO-DC SWITCH MODE POWER
`CONVERTER CIRCUITS, Van Nostrand Reinhold Co. (1985) (selected
`excerpts)
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`1
`
`
`
`
`EX1016
`
`EX1017
`
`Case IPR2022-00499
`U.S. Patent No. 7,825,537
`
`Baker et al., CMOS CIRCUIT DESIGN, LAYOUT, AND SIMULATION,
`IEEE Press (1998) (selected excerpts)
`
`Erickson, FUNDAMENTALS OF POWER ELECTRONICS, Chapman & Hall,
`International Thomson Publishing (1997) (selected excerpts)
`
`EX1018
`
`Horowitz et al., THE ART OF ELECTRONICS, 2nd Ed., Cambridge
`University Press (1989) (selected excerpts)
`
`EX1019
`
`Daniel M. Mitchell, DC-DC SWITCHING REGULATOR ANALYSIS,
`McGraw-Hill (1986) (selected excerpts)
`
`EX1020
`
`Settlement Agreement
`
`
`
`
`
`
`
`
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`2
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`
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`Petitioner and Patent Owner (collectively “Parties”) hereby jointly move for
`
`Case IPR2022-00499
`U.S. Patent No. 7,825,537
`
`
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`an order terminating the preliminary proceeding initiated by the petition for inter
`
`partes review filed on February 1, 2022, directed to Patent No. 7,825,537 (“the
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`challenged patent”) and assigned case number IPR2022-00499. The Parties have
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`reached a settlement, and the Board has yet to issue a decision to institute trial.
`
`I. Statement of Precise Relief Requested
`The parties jointly request that the Board terminate the inter partes review of
`
`U.S. Patent 7,825,537, Case IPR2022-00499 in its entirety.
`
`II.
`
` Reasons Why Termination Is Appropriate
`The Board authorized the Parties on August 30, 2022 to file this Joint Motion
`
`To Terminate. Termination is proper because the Parties are jointly requesting
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`termination, this IPR proceeding is still in its early stages, and the Board has not yet
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`“decided the merits of the proceeding.” Samsung Electronics Co., Ltd. et al v.
`
`Neodron Ltd., IPR2020-01682, Paper 14, 3 (February 18, 2021); see also Samsung
`
`Electronics Co., Ltd. v. Fundamental Innovation Systems Int’l, IPR2018-00605,
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`Paper 10, 2 (PTAB July 16, 2018). Accordingly, termination is appropriate here.
`
`The parties are filing herewith as Exhibit 1020, a true copy of settlement
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`agreement entered between the Parties, and a request is being filed herewith to treat
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`this agreement as “business confidential information.” See 37 C.F.R. § 42.74(c).
`
`The settlement agreement was entered into in contemplation of terminating this
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`
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`3
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`
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`proceeding, and Petitioner and Patent Owner certify there are no collateral
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`Case IPR2022-00499
`U.S. Patent No. 7,825,537
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`agreements or understandings made in connection with, or in contemplation of, the
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`termination of the proceeding. See 37 C.F.R. § 42.74(b). The Parties have moved
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`to dismiss the district court litigation and do not contemplate any litigation involving
`
`the challenged patent in the foreseeable future.
`
`Petitioner will not participate further in this proceeding. The Parties
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`understand that if the Board terminates this IPR proceeding before a final written
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`decision on patentability, no estoppel under 35 U.S.C. § 315(e) or 37 C.F.R. §
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`42.73(d)(1) will attach to Petitioner, and no preclusion will attach to Patent Owner
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`under 37 C.F.R. § 42.73(d)(3).
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`III. Conclusion
`The parties have settled all disputes relating to the challenged patent. This IPR
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`proceeding is in an early stage, and the Board has not entered a final written decision
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`on the merits in this proceeding. Accordingly, the parties respectfully request the
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`Board to terminate this proceeding in its entirety.
`
`
`
`Date: September 2, 2022
`
`Respectfully submitted,
`
`
` /Michael T. Hawkins/
`Michael T. Hawkins, Reg. No. 57,867
`Fish & Richardson P.C.
`Counsel for Petitioner
`
`
`
` /Brett Cooper/
`Brett Cooper, Reg. No. 55,085
`Russ, August & Kabat
`Counsel for Patent Owner
`
`
`
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`4
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`Case IPR2022-00499
`U.S. Patent No. 7,825,537
`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on September
`
`2, 2022, a complete and entire copy of this Joint Motion to Terminate Proceeding
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`and Exhibit 1020 was provided via email, to the Patent Owner by serving the
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`correspondence email addresses of record as follows:
`
`Brett Cooper
`Reza Mirzaie
`RUSS, AUGUST & KABAT
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`
`Email:
`Rak_Scramoge@raklaw.com
`
`
`
`
`
`
`
`
`
`
`/Kristyn Waldhauser/
`Kristyn Waldhauser
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 638-5731
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