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Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 10
` Entered: August 30, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE LLC,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`____________
`
`IPR2022-00478 (Patent 10,367,370 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
`
`KALAN, Administrative Patent Judge.
`
`
`ORDER
`Settlement as to Samsung Electronics Co., Ltd. and
`Samsung Electronics America, Inc.
`37 C.F.R. §§ 42.5(a), 42.71(a), 42.74
`
`1 This Order addresses the same issue for the above-identified proceedings.
`Therefore, we exercise our discretion to issue one order to be filed in each
`proceeding. The parties, however, are not authorized to use this style
`heading in any subsequent papers.
`2 This is not an expanded panel. Judges McNamara, Kalan, and
`Wormmeester are the panel in IPR2022-00478 and IPR2022-00643.
`Judges Lee, Easthom, and Kalan are the panel in IPR2022-00683.
`
`
`
`

`

`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
`IPR2022-00683 (Patent 7,825,537 B2)
`
`INTRODUCTION
`I.
`Petitioner Samsung Electronics Co., Ltd, and Samsung Electronics
`America, Inc. (collectively “Samsung”) and Patent Owner Scramoge
`Technology Ltd. (“Patent Owner”) have requested that the above-identified
`inter partes review proceedings be terminated as to Petitioner Samsung
`pursuant to a settlement. On August 9, 2022, we authorized Samsung and
`Patent Owner via email to file a joint motion to terminate the above-
`identified proceedings. Subsequently, Samsung and Patent Owner filed a
`Joint Motion to Terminate Samsung as a Petitioner in each of the above-
`identified proceedings (“Joint Motion”). Paper 9.3 In each of the above-
`identified proceedings, Samsung and Patent Owner also filed a copy of their
`Patent License Agreement (Ex. 10334) and their Escrow Agreement
`(Ex. 1034) (collectively “Settlement Agreement”), as well as a Joint Request
`to Keep Separate (“Joint Request”) 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 10.5
`
`II. DISCUSSION
`In the Joint Motion, Samsung and Patent Owner represent that they
`have reached an agreement to jointly seek termination of Samsung as
`
`3 For purposes of expediency, we cite to Papers filed in IPR2022-00478. A
`similar Joint Motion was filed in IPR2022-00643 (Paper 9) and IPR2022-
`00683 (Paper 8).
`4 Samsung and Patent Owner filed the Settlement Agreement in IPR2022-
`00643 (Exs. 1010, 1011) and IPR2022-00683 (Exs. 1018, 1019) as well.
`5 For purposes of expediency, we cited to Papers filed in IPR2022-00478. A
`similar Joint Request was filed in IPR2022-00643 (Paper 10) and IPR2022-
`00683 (Paper 9).
`
`2
`
`

`

`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
`IPR2022-00683 (Patent 7,825,537 B2)
`
`Petitioner in the above-identified proceedings, that a copy of the Settlement
`Agreement has been filed as an exhibit, and that there are no other collateral
`agreements or understandings. Joint Motion 1. Further, the Settlement
`Agreement indicates it is a complete agreement. Ex. 1033, 13. Samsung
`and Patent Owner also represent that their Settlement Agreement resolves all
`their disputes relating to the above-identified patents. Joint Motion 1–3.
`We have not yet instituted a trial in the above-identified proceedings.
`Nor have we decided the merits of the above-identified proceedings, and a
`final written decision has not been entered in any of the above-identified
`proceedings. Samsung and Patent Owner have shown adequately that
`dismissal of Samsung as a Petitioner in the above-identified proceedings is
`appropriate. Under these circumstances we determine that good cause exists
`to dismiss the petitions as they relate to Samsung only and terminate each of
`the above-identified proceedings as to Samsung only. Google LLC will
`remain as Petitioner in each of the above-identified proceedings.
`In the Joint Request, Samsung and Patent Owner requested that the
`Settlement Agreement be treated as business confidential information and be
`kept separate from the files of the above-identified patents. Joint Request 1.
`After reviewing the Settlement Agreement between Samsung and Patent
`Owner, 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 Samsung and
`Patent Owner as business confidential information pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`3
`
`

`

`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
`IPR2022-00683 (Patent 7,825,537 B2)
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion with respect to Samsung in each of
`the above-identified proceedings is granted;
`FURTHER ORDERED that the Petition in each proceeding is
`dismissed as to Samsung only, and each proceeding is terminated with
`respect to Samsung only;
`FURTHER ORDERED that Google LLC will remain as Petitioner in
`each of these proceedings, and each of the above-identified proceedings will
`continue;
`FURTHER ORDERED that the Joint Request to Keep Separate in
`each of the above-identified proceedings is granted, and the Settlement
`Agreement shall be kept separate from the files of the above-identified
`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); and
`FURTHER ORDERED that the caption for each of the above-
`identified proceedings is modified as set forth on the attached Exhibit. The
`remaining parties are directed to use this caption in all further filings.
`
`4
`
`

`

`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
`IPR2022-00683 (Patent 7,825,537 B2)
`
`
`PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Phillip Citroen
`Paul M. Anderson
`Quadeer A. Ahmed
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitreon@paulhastings.com
`paulanderson@paulhastings.com
`quadeerahmed@paulhastings.com
`
`Kappos John
`Ben Haber
`James Li
`O’MELVENY & MYERS LLP
`jkappos@omm.com
`bhaber@omm.com
`bhaber@omm.com
`
`
`PATENT OWNER:
`Brett Cooper
`Reza Mirzaie
`RUSS, AUGUST & KABAT
`bcooper@raklaw.com
`rmirzaie@raklaw.com
`
`
`
`
`5
`
`

`

`
`
`
`
`
`
`
`
`
`IPR2022-00478 (Patent 10,367,370 B2)
`IPR2022-00643 (Patent 10,193,392 B2)
`IPR2022-00683 (Patent 7,825,537 B2)
`
`EXHIBIT: Sample Case Caption
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`____________
`
`IPR2022-XXXXX
`Patent Y,YYY,YYY B2
`____________
`
`
`6
`
`

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