`571-272-7822
`
`
` Paper 9
`
`Date Entered: October 18, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS, LTD.,
`Petitioner,
`
`v.
`
`AIRE TECHNOLOGY LIMITED
`Patent Owner.
`____________
`
`IPR2022-00874 (Patent 8,174,360 B2)
`IPR2022-00875 (Patent 8,205,249 B2)
`IPR2022-00876 (Patent 8,581,706 B2)
`IPR2022-00877 (Patent 8,816,827 B2)1
`____________
`
`
`Before JEFFREY S. SMITH, BRIAN J. McNAMARA, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`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.
`
`
`
`IPR2022-00874 (Patent 8,174,360 B2)
`IPR2022-00875 (Patent 8,205,249 B2)
`IPR2022-00876 (Patent 8,581,706 B2)
`IPR2022-00877 (Patent 8,816,827 B2)
`
`
`INTRODUCTION
`I.
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively “the Parties”) filed a Joint Motion to Dismiss in each of the
`above-identified proceedings due to settlement. Paper 62 (“Joint Motion”).
`Along with the Joint Motion, the Parties filed, in each of the above identified
`proceedings, a copy of their Patent License Agreement (Ex. 1102) and their
`Escrow Agreement (Ex. 2001)3 (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 7.
`II. DISCUSSION
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of 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
`2. Further, the Settlement Agreement indicates it is a complete agreement.
`Ex. 1011, 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.
`
`
`2 For purposes of expediency, we cite to Papers filed in IPR2022-00874.
`Similar papers were filed in the other above-identified proceedings.
`3 For purposes of expediency, we cite to Exhibits filed in IPR2022-00874.
`The Parties filed the Settlement Agreement in the other above-identified
`proceedings as well
`
`
`
`2
`
`
`
`IPR2022-00874 (Patent 8,174,360 B2)
`IPR2022-00875 (Patent 8,205,249 B2)
`IPR2022-00876 (Patent 8,581,706 B2)
`IPR2022-00877 (Patent 8,816,827 B2)
`
`
`The above-identified proceedings are at an early stage, and we have
`not yet decided whether to institute a trial in any of 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. In the Joint Request, the Parties 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, 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 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).
`III. ORDER
`Accordingly, for the reasons discussed above, it is: ORDERED that
`the Joint Motion in each of the above-identified proceedings is granted;
`FURTHER ORDERED that the Petition in each proceeding is
`dismissed, and each of the above-identified proceedings is terminated; and
` 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).
`
`
`
`3
`
`
`
`IPR2022-00874 (Patent 8,174,360 B2)
`IPR2022-00875 (Patent 8,205,249 B2)
`IPR2022-00876 (Patent 8,581,706 B2)
`IPR2022-00877 (Patent 8,816,827 B2)
`
`
`
`PETITIONER
`W. Karl Renner
`Jeremy J. Monaldo
`Jennifer Huang
`Kiersten Batzli
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`jjh@fr.com
`batzli@fr.com
`
`
`
`PATENT OWNER
`
`Brett Cooper
`Reza Mirzaie
`RUSS, AUGUST & KABAT
`bcooper@raklaw.com
`rmirzaie@raklaw.com
`
`
`
`
`4
`
`
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