throbber
Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 8
` 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.
`____________
`
`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00603 (Patent 10,804,740 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
` IPR2022-00683 (Patent 7,825,537 B2)1
`
`____________
`
`
`Before JAMESON LEE, KARL D. EASTHOM, BRIAN J. McNAMARA,
`KRISTINA M. KALAN, and MICHELLE N. WORMMEESTER,
`Administrative Patent Judges.2
`
`EASTHOM, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`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 Wormmeester, Kalan, and
`McNamara are on the panel for IPR2022-00478. Judges McNamara, Lee,
`and Easthom are the panel for IPR2022-00603. Judges Kalan, McNamara,
`and Wormmeester are on the panel for IPR2022-00643. Judges Easthom,
`Lee, and Kalan are the panel for IPR2022-00683.
`
`
`
`

`

`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00603 (Patent 10,804,740 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
`IPR2022-00683 (Patent 7,825,537 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 (“Joint
`Motion”) in each of the above-identified proceedings due to settlement of
`the parties’ disputes. Paper 12 (“Joint Motion”).3 With the Joint Motion,
`the parties filed, in each of the above-identified proceedings, a copy of their
`Settlement Agreement (Ex. 1035) 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 13
`(“Joint Request”), 1.
`
`II. DISCUSSION
`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 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 1035.” Id.
`
`3 References are to Papers and Exhibits in IPR2022-00478; however,
`reference to Papers 12 (or Joint Motion) and 13 (or Joint Request) include
`Papers 6 and 7 in IPR2022-00603, Papers 12 and 13 in IPR2022-00643, and
`Papers 11 and 12 in IPR2022-00683, respectively. Reference to Exhibit
`1035 (or Settlement Agreement) includes Exhibit 1017 in IPR2022-00603,
`Exhibit 1012 in IPR2022-00643, and Exhibit 1020 in IPR2022-00683,
`respectively.
`
`2
`
`

`

`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00603 (Patent 10,804,740 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
`IPR2022-00683 (Patent 7,825,537 B2)
`
`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.
`The above-identified proceedings are at an early stage, and we have
`not yet decided whether to institute a trial in the above-identified
`proceedings. In view of the early stage of the above-identified proceedings,
`and the settlement between the parties, we determine that good cause exists
`to dismiss the petitions and terminate the above-identified proceedings with
`respect to the parties.
`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
`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
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion is granted and these proceedings are
`terminated;
`
`3
`
`

`

`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00603 (Patent 10,804,740 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
`IPR2022-00683 (Patent 7,825,537 B2)
`
`FURTHER ORDERED that the Petition in each proceeding is
`dismissed; 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
`
`

`

`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00603 (Patent 10,804,740 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
`IPR2022-00683 (Patent 7,825,537 B2)
`
`
`PETITIONER:
`Naveen Modi
`Joseph Palys
`Phillip Citroen
`Paul Anderson
`Quadeer Ahmed
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@paulhastings.com
`paulanderson@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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