`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
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`v.
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`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
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`Case No. IPR2022-00876
`U.S. Patent No. 8,581,706
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`JOINT MOTION TO DISMISS
`PURSUANT TO 37 C.F.R. § 42.71
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`Attorney Docket No. 39843-0132IP1
`Case No. IPR2022-00876
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`EXHIBITS
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`SAMSUNG-1001 U.S. Patent No. 8,581,706 to Klaus Finkenzeller et al. (“the
`’706 patent”)
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`SAMSUNG-1002 Excerpts from the Prosecution History of the ’706 Patent (“the
`Prosecution History”)
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`SAMSUNG-1003 Declaration of Dr. Tajana Rosing
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`SAMSUNG-1004 U.S. Patent Publication No. 2005/0184163 to de Jong
`(hereinafter, “Jong”)
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`SAMSUNG-1005 Certified Translation of Japanese Laid-Open Patent Application
`No. 2000-163539 to Nozawa
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`SAMSUNG-1006 Japanese Laid-Open Patent Application No. 2000-163539 to
`Nozawa
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`SAMSUNG-1007 U.S. Patent No. 6,220,510 to Everett et al.
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`SAMSUNG-1008 U.S. Patent No. 8,016,192 to Messerges et al.
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`SAMSUNG-1009 Excerpts from RFID Handbook, 2nd Edition, Klaus
`Finkenzeller, 2003 (hereinafter, “RFIDH”)
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`SAMSUNG-1010 U.S. Patent Publication No. 2008/0212558 to Aillaud et al.
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`SAMSUNG-1011Java Card™ 2.1 Runtime Environment (JCRE) Specification
`(Revision 1.0), Sun Microsystems, February 24, 1999
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`SAMSUNG-1012 Java Card 2.1™ Virtual Machine Specification (Revision 1.0),
`Sun Microsystems, March 3, 1999 (hereinafter, “JCVM”)
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`SAMSUNG-1013 Java Card 2.1 Application Programming Interface (Revision
`1.0), Sun Microsystems, February 24, 1999
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`SAMSUNG-1014 ISO/IEC Standard 14443-3: Initialization and Anticollision,
`First Edition, February 1, 2001
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`i
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`Attorney Docket No. 39843-0132IP1
`Case No. IPR2022-00876
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`SAMSUNG-1015 Contactless Payment and the Retail Point of Sale: Applications,
`Technologies and Transaction Models, Smart Card Alliance,
`March 2003
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`SAMSUNG-1016 Contactless Technology for Secure Physical Access:
`Technology and Standards Choices, Smart Card Alliance,
`October 2002
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`SAMSUNG-1017 Contactless Payments: Delivering Merchant and Consumer
`Benefits, Smart Card Alliance, April 2004
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`SAMSUNG-1018 U.S. Patent No. 7,232,073 to de Jong
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`SAMSUNG-1019 U.S. Patent No. 5,721,781 to Deo et al.
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`SAMSUNG-1020-1021 [RESERVED]
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`SAMSUNG-1022 U.S. Patent Publication No. 2004/0083380 to Janke
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`SAMSUNG-1023 European Patent No. 0818761 to Drupsteen et al.
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`SAMSUNG-1024-1099 [RESERVED]
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`SAMSUNG-1100 Complaint from Aire Technology Ltd. v. Samsung Electronics
`Co., Ltd., Case No. 6:21-cv-00955-ADA (W.D. Tex.)
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`SAMSUNG-1101 Court’s Docket for Aire Technology Ltd. v. Samsung
`Electronics Co., Ltd., Case No. 6:21-cv-00955-ADA (W.D.
`Tex.)
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`SAMSUNG-1102 Patent License Agreement and Escrow Agreement
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`SAMSUNG-1103 Declaration of June Ann Munford
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`ii
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`Attorney Docket No. 39843-0132IP1
`Case No. IPR2022-00876
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`I. RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.71, and the Board’s authorization provided by
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`email on August 30, 2022, Petitioner Samsung Electronics Co., Ltd. (“Petitioner”)
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`and Patent Owner Aire Technology Ltd. (“Patent Owner”) jointly request dismissal
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`of the present Petition involving U.S. Patent No. 8,581,706 (the “’706 Patent”), and
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`dismissal of IPR2022-00876 in its entirety.
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`II. BACKGROUND
`A.
`Status of the Present Proceeding
`IPR2022-00876 was initiated by the filing of a Petition for inter partes review
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`of the ’706 Patent on May 2, 2022. The Board accorded a filing date to the Petition
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`on May 18, 2022, and the deadline for a decision on institution is still months away
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`(November 18, 2022).
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`B. Related Matters Involving the ’706 Patent
`In addition to IPR2022-00876, the ’706 Patent is separately involved in Aire
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`Technology Ltd. v. Samsung Electronics Co., Ltd, Case No. 6:21-cv-00955-ADA
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`(W.D. Tex.) (“Related Litigation”), in which Patent Owner is the plaintiff and
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`Petitioner is a defendant; Aire Technology Ltd. v. Apple Inc., Case No. 6:21-cv-1101-
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`ADA (W.D.Tex.); Aire Technology Ltd. v. Google LLC, Case No. 6:21-cv-
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`1104ADA (W.D. Tex.); Aire Technology Ltd. v. Garmin Int’l Inc., Case No. 8:22-
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`cv-01027-JVS-KES (C.D. Cal.); and Apple Inc. v. Aire Technology Ltd., IPR2022-
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`01137 (PTAB June 15, 2022).
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`1
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`Attorney Docket No. 39843-0132IP1
`Case No. IPR2022-00876
`Petitioner and Patent Owner jointly moved to dismiss the Related Litigation
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`in the U.S. District Court for the Western District of Texas on August 9, 2022. The
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`’706 Patent is not involved in any other pending litigation.
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`C.
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`Filing of Patent License Agreement and Escrow Agreement, and
`Certification of No Collateral Agreements or Understandings
`Petitioner and Patent Owner executed a Patent License Agreement and an
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`Escrow Agreement on June 30, 2022, which fully settled all matters in controversy
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`between the parties. The parties are concurrently filing true copies of the Patent
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`License Agreement and the Escrow Agreement in Exhibit 1102, along with a Joint
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`Request That Patent License Agreement and Escrow Agreement Be Treated As
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`Business Confidential Information under 37 C.F.R. § 42.74(c).
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`Petitioner and Patent Owner certify that, beyond the Patent License and
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`Escrow Agreements, there are no collateral agreements or understandings made in
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`connection with, or in contemplation of, dismissal of the present Petition, or of
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`IPR2022-00876.
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`IV. GOOD CAUSE JUSTIFIES DISMISSAL OF THE PETITION
`Consistent with 37 C.F.R. § 42.71(a), the Board has recognized that dismissal
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`of pre-institution petitions is available upon a showing of good cause. See, e.g.,
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`Samsung Elec. Co. Ltd. v. Telefonaktiebolaget LM Ericsson, IPR2021-00446, Paper
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`7, at 5 (PTAB August 3, 2021) (finding good cause to dismiss a petition where “[t]he
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`parties have settled their dispute, the proceedings are early in the preliminary stages,
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`2
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`Attorney Docket No. 39843-0132IP1
`Case No. IPR2022-00876
`Patent Owner has not filed any preliminary responses, and the Board has not issued
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`any decisions or otherwise invested in the merits of these proceedings”); Apple Inc.
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`v. Pinn, Inc., IPR2021-00220 Paper 10 (PTAB Mar. 19, 2021); Staylinked Corp. v.
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`Ivanti, Inc., IPR2021-00022, Paper 10 (PTAB Feb. 4, 2021); Intel Corp. v. Tela
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`Innovations, Inc., IPR2019-01257, Paper 16 (PTAB Jan. 2, 2020); World
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`Programming LTD. v. SAS Institute, Inc., IPR2019-01457 Paper 19 (PTAB Dec. 27,
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`2019).
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`Similar to the circumstances in Ericsson, this proceeding is in an early,
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`preliminary stage, and a decision on institution is not due until November 18, 2022.
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`See Ericsson, IPR2021-00446, Paper 7, at 5. In light of the parties’ Patent License
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`and Escrow Agreements—which settled all matters in controversy between the
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`parties involving the ’706 Patent—dismissal of the present Petition and IPR2022-
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`00876 is appropriate to conserve the resources of the Board, to conserve the
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`resources of the parties, and to promote a speedy, just, and inexpensive resolution of
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`the proceeding. The Board has recognized that “[t]here are strong public policy
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`reasons to favor settlement between the parties to a proceeding,” and as such, the
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`Board “expects” a proceeding to be ended “unless the Board has already decided the
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`merits of the proceeding.” Consolidated Trial Practice Guide, November 2019, p.
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`86. Here, the merits in this proceeding have not been decided, let alone considered
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`3
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`Attorney Docket No. 39843-0132IP1
`Case No. IPR2022-00876
`in any decision by the Board. Accordingly, good cause exists to dismiss the Petition
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`and IPR2022-00876 in its entirety.
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`V. CONCLUSION
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`For the above reasons, the parties respectfully request that the Board dismiss
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`the present Petition and IPR2022-00876 pursuant to 37 C.F.R. § 42.71.
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`Dated: September 9, 2022
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`Respectfully submitted,
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Fish & Richardson P.C.
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`Counsel for Petitioner
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`/Brett Cooper/
`Brett Cooper, Reg. No. 55,085
`BC Law Group P.C.
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`Counsel for Patent Owner
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`4
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`Attorney Docket No. 39843-0132IP1
`Case No. IPR2022-00876
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on September
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`9, 2022, a complete and entire copy of this Joint Motion to Dismiss and Exhibit 1102
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`were provided by email to the Patent Owner by serving the email correspondence
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`addresses of record as follows:
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`Brett Cooper
`Reza Mirzaie
`Russ, August & Kabat
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
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`Email: bcooper@raklaw.com
`rmirzaie@raklaw.com
`rak_aire@raklaw.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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`5
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