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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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`GOOGLE LLC,
`Petitioner
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`V.
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`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
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`_________________
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` IPR2022-00603
`Patent No. 10,804,740
`___________________
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` PETITIONER 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 (“Petitioner”)
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`Case No. IPR2022-00603
`Patent No. 10,804,740
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`and Patent Owner Scramoge Technology Ltd. (“Patent Owner”) (collectively, “the
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`Parties”) jointly request termination of this proceeding. The Parties have entered into
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`a written confidential settlement agreement that settles all disputes between them,
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`including those relating to this proceeding and the related district court actions,
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`Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-00616 (W.D. Tex.) and
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`Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-01138 (W.D. Tex.), which
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`were dismissed with prejudice on August 24, 2022. Pursuant to 37 C.F.R. § 42.74, a
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`true copy of the Parties’ settlement agreement (including any other related
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`agreement between the Parties) has been filed as Exhibit 1017. This Joint Motion
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`was authorized by the Board pursuant to e-mail correspondence on August 31, 2022.
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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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`public policy reasons to favor settlement between the parties to a proceeding. . . .
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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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`1
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`The Board has not yet “decided the merits of the proceeding before the
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`Case No. IPR2022-00603
`Patent No. 10,804,740
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`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added); 77 Fed.
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`Reg. 48768 (“The Board expects that a proceeding will terminate after the filing of
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`a settlement agreement, unless the Board has already decided the merits of the
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`proceeding.”). Indeed, the Board has not yet made a decision on institution of this
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`inter partes review. Petitioner filed its petition for inter partes review on February
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`14, 2022. No motions are outstanding in this proceeding. No other party’s rights
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`will be prejudiced by the termination of this inter partes review. This supports the
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`propriety of terminating this proceeding even though the settlement and
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`termination provisions of 35 U.S.C. § 317, on their face, apply only to “instituted”
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`proceedings. 77 Fed. Reg. 48680, 48686 (Aug. 14, 2012) (And 35 U.S.C. 317(a)
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`provides “An inter partes review instituted under this chapter shall be terminated
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`with respect to any petitioner upon the joint request of the petitioner and the patent
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`owner, unless the Office has decided the merits of the proceeding before the
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`request for termination is filed.”)
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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 Settlement
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`Agreement as Business Confidential and to Keep Separate, pursuant to 35 U.S.C. §
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`317(b), along with the true copy of the written settlement agreement, which includes
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`all agreements between the Parties related to this proceeding (Ex. 1017). The Parties
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`request that the settlement agreement be treated as business confidential information
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`Case No. IPR2022-00603
`Patent No. 10,804,740
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`and be kept separate from the files of the involved patent, and be made available
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`only to Federal Government agencies on written request, or to any person on
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`showing of good cause under 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c). The Parties
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`certify that there are no other collateral agreements or understandings, oral or
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`written, between the parties made in connection with, or in contemplation of, the
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`termination of this proceeding.
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`Accordingly, the Parties respectfully request that that the Board grant the
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`Parties’ Joint Motion to Terminate.
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`Dated: September 1, 2022
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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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`/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. IPR2022-00603
`Patent No. 10,804,740
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 1, 2022, a copy of the foregoing Petitioner
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`Google LLC and Patent Owner’s Joint Motion to Terminate Pursuant To 35 U.S.C.
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`§ 317 was served by electronic means upon the following:
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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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