Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 21
` Entered: September 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`____________
`
`IPR2022-00241 (Patent 9,825,482 B2)
`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
`
`LEE, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`1 This Order addresses the same issue for the above-identified proceedings.
`2 This is not an expanded panel. Judges Lee, Easthom, and Moore are the
`panel for IPR2022-00241 and IPR2022-00284. Judges Lee, Easthom, and
`McNamara are the panel for IPR2022-00385.
`
`
`571.272.7822
`
`
` Paper No. 21
` Entered: September 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`____________
`
`IPR2022-00241 (Patent 9,825,482 B2)
`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
`
`LEE, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`1 This Order addresses the same issue for the above-identified proceedings.
`2 This is not an expanded panel. Judges Lee, Easthom, and Moore are the
`panel for IPR2022-00241 and IPR2022-00284. Judges Lee, Easthom, and
`McNamara are the panel for IPR2022-00385.
`
`
`
`IPR2022-00241 (Patent 9,825,482 B2)
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`INTRODUCTION
`I.
`On September 13, 2022, a conference call was held in the above-
`identified proceedings. In each of these proceedings, Petitioner entities
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`(collectively “Samsung”) were terminated on August 29, 2022, by reason of
`settlement. The participants to the conference call were lead and backup
`counsel for Petitioner (Messrs. John Kappos, Cameron Westin, and Phillip
`Citroen), lead counsel for Patent Owner (Mr. Brett Cooper), a representative
`of RPX Corporation (Mr. Steve Chiang) who is not a party and who was
`invited to the conference call by Petitioner and Patent Owner, and Judges
`Jameson Lee, Karl Easthom, Brian McNamara, and Aaron Moore.
`Mr. Kappos informed the Board (1) that the Escrow Agreement filed
`in these proceedings, i.e., Exhibit 1034 in IPR2022-00385, Exhibit 1019 in
`IPR2022-00241, and Exhibit 1029 in IPR2022-00284, which is a part of the
`parties’ agreement leading to termination of Samsung, was filed with
`redactions, (2) that neither party (including Samsung) nor counsel for the
`parties (including Samsung’s counsel) knew the subject matter redacted or
`possessed an unredacted copy because the redacted material pertains to third
`party payments, (3) that RPX Corporation is the only entity which possesses
`an unredacted version of the Escrow Agreement, and (4) that the parties
`including terminated Samsung do not object to RPX Corporation sending the
`Board a copy of the unredacted version of the Escrow Agreement for entry
`into the record of these proceedings with access status set to “Board only.”
`Mr. Cooper, on behalf of Patent Owner, concurred. The parties asked only
`that the unredacted Escrow Agreement be treated as confidential business
`information under 35 U.S.C. § 317(b) and 37 C.F.R. 42.74(c).
`
`2
`
`
`
`IPR2022-00241 (Patent 9,825,482 B2)
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`Mr. Chiang, representing RPX Corporation, stated that RPX
`Corporation is willing to file an unredacted copy of the Escrow Agreement
`at issue in these proceedings. The Judges expressed that assuming that such
`an unredacted copy of the Escrow Agreement were filed, the Board grants
`the parties’ request to treat the unredacted Escrow Agreement as confidential
`business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`The subject matter of the call changed to related proceedings, all pre-
`institution, some already terminated and some not, which also involve
`Samsung as Petitioner and Scramoge as Patent Owner, and which may share
`the same issue of redactions in the Escrow Agreement filed at the Board.
`Those proceedings are IPR2022-00478, IPR2022-00636, IPR2022-00643,
`IPR2022-00653, IPR2022-00683, IPR2022-00939, IPR2022-01052,
`IPR2022-01053, IPR2022-01054, IPR2022-01055, IPR2022-01056,
`IPR2022-01057, and IPR2022-01058. The parties proposed the same course
`of action as proposed for IPR2022-00241, IPR2022-00284, and IPR2022-
`00385, assuming that there is a redacted Escrow Agreement filed at the
`Board, subject to verification. Mr. Chiang expressed agreement, also subject
`to verification of the proceeding numbers. Hereinafter, we refer to these
`cases as the second group of proceedings.
`Judges Michelle Wormmeester and Kristina Kalan were also present
`on the call. All of the panel members for each proceeding in the second
`group of proceedings were present on the call. The Board agreed that if an
`unredacted version of the Escrow Agreement were filed in the proceedings
`in the second group of proceedings, the Board grants the parties’ request to
`treat the unredacted Escrow Agreement as confidential business information
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`3
`
`
`
`IPR2022-00241 (Patent 9,825,482 B2)
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`II. DISCUSSION
`Although the parties, RPX Corporation, and the Board agreed in
`principle to the foregoing, a problem lies in execution. RPX Corporation, as
`a non-party, is unable to file any paper in these proceedings. We have
`verified that only counsel for a party or an inventor acting pro se may file
`papers in the Board’s automated filing system P-TACTS. The parties
`proposed that RPX Corporation would send the unredacted Escrow
`Agreement to the Board as an attachment to an email, and the Board would
`enter the unredacted Escrow Agreement into P-TACTS as “Board only.”
`But that leaves the issue of the attachment copy after it has been uploaded
`into P-TACTS. It will not be monitored and we are uncertain that as a
`government record it can or should be deleted. We are uncertain that we
`would authorize that approach, absent further deliberation on the matter.
`We asked the parties and RPX Corporation to consider having a copy
`of the unredacted Escrow Agreement sent either to counsel for Petitioner or
`to counsel for Patent Owner, possibly on an “outside counsel only” basis, for
`filing in P-TACTS. The parties and RPX Corporation can negotiate what
`happens to the copy after it is uploaded into P-TACTS.
`III. ORDER
`For the reasons discussed above, it is
`ORDERED that the parties will initiate another call with the Board
`before September 16, 2022, to inform the Board how it has decided to have
`filed an unredacted copy of the Escrow Agreement in P-TACTS; and
`FURTHER ORDERED that a copy of this Order will be entered in
`each of the proceedings in the second group of proceedings identified above,
`as a 3000 series exhibit.
`
`
`4
`
`
`
`IPR2022-00241 (Patent 9,825,482 B2)
`IPR2022-00284 (Patent 9,997,962 B2)
`IPR2022-00385 (Patent 9,843,215 B2)
`
`
`For 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
`
`
`For PATENT OWNER:
`Brett Cooper
`Reza Mirzaie
`RUSS AUGUST & KABAT
`bcooper@raklaw.com
`rmirzaie@raklaw.com
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
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