throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 37
`Date: June 26, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., HP INC., AMAZON.COM, INC., AMAZON.COM
`SERVICES LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., GOOGLE LLC, DELL
`TECHNOLOGIES INC. and DELL INC.,
`Petitioner,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`
`IPR2022-003671
`Patent 10,715,235 B2
`
`
`
`
`
`
`
`
`
`Before BARBARA A. PARVIS, JAMES J. MAYBERRY, and
`NORMAN H. BEAMER Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
` TERMINATION
`Due to Settlement After Institution of Trial and
`Granting Joint Request to Treat Settlement
`Agreement as Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`1 Amazon.com, Inc., and Amazon.com Services LLC, which filed a petition
`in IPR2022-01353; Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., and Google LLC, which filed a petition in IPR2022-01362,
`and Dell Technologies Inc. and Dell Inc., which filed a petition in
`IPR2022-01398, were joined as Petitioner in this proceeding.
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2022-00367
`Patent 10,715,235 B2
`
`INTRODUCTION
`I.
`With the Board’s authorization, Apple Inc., HP Inc., Amazon.com,
`Inc., Amazon.com Services LLC, Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., Google LLC, Dell Technologies Inc., and Dell
`Inc. (collectively, “Petitioners”), and XR Communications (“Patent Owner”)
`(collectively, “the Parties”) filed a Joint Motion to Terminate the above-
`captioned inter partes review proceeding. Paper 34 (“Joint Motion”), see id.
`at 1 (“The [P]arties were authorized to file this joint motion to terminate by
`the Board via emails on June 12 and 13, 2023”). The Parties also filed a
`joint request that the Settlement Agreement be treated as business
`confidential information and kept separate from the file of U.S. Patent No.
`10,715,235 B2 (“the ’235 patent”). Paper 35 (“Joint Request to Keep
`Separate”).
`Along with the Joint Motion and Joint Request to Keep Separate, the
`Parties filed a copy of Confidential Settlement Agreements. Exs.
`2017–2022 (“Settlement Agreements”).
`
`
`II. DISCUSSION
`A. Joint Motion to Terminate
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.”
`35 U.S.C. § 317(a) also provides that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`The Parties state that they have jointly moved to dismiss the pending
`District Court litigation between them, and that they “do not contemplate
`
`2
`
`

`

`IPR2022-00367
`Patent 10,715,235 B2
`any future litigation or proceeding involving the [’235 patent] in the
`foreseeable future.” Joint Motion 2. The Parties indicate Exhibits
`2017–2022 represents copies of the settlement agreements between the
`Parties, and “[t]here are other collateral agreements between the parties
`made in connection with, or in contemplation of, the termination sought.”
`Id. at 1.
`We instituted trial for the above-identified inter partes review
`proceeding on July 14, 2022. See Paper 5. We have not yet decided the
`merits of the proceeding, and a final written decision has not been entered.
`Also, the Petitioners include the original and all joined petitioners to this
`proceeding. Under these circumstances and in view of the Parties’
`settlement, we determine that good cause exists to terminate the proceeding.
`B. Joint Request to Keep Separate
`In the Joint Request to Keep Separate, the Parties request that the
`Settlement Agreements be treated as business confidential information, be
`kept separate from the file of the ’235 patent, and be made available only as
`permitted pursuant to the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). Joint Request 1.
`After reviewing the Settlement Agreements, we determine that good
`cause exists to treat the Settlement Agreements as business confidential
`information pursuant to 37 C.F.R. § 42.74(c), and we grant the Parties’
`request in that regard.
`
`
`3
`
`

`

`IPR2022-00367
`Patent 10,715,235 B2
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate (Paper 34) is granted,
`and IPR2022-00367 is terminated; and
`FURTHER ORDERED that the Parties’ request to treat the Settlement
`Agreement as business confidential information (Paper 35) is granted, and
`the Settlement Agreements (Exs. 2017–2022) shall be kept separate from the
`file of U.S. Patent No. 10,715,235 B2, and made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause, pursuant to 37 C.F.R. § 42.74(c).
`
`4
`
`

`

`IPR2022-00367
`Patent 10,715,235 B2
`For PETITIONER:
`
`W. Karl Renner
`David L. Holt
`Usman A. Khan
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`holt2@fr.com
`khan@fr.com
`
`Andrew M. Mason
`Todd M. Siegel
`Cameron D. Clawson
`Claire Green
`KLARQUIST SPARKMAN, LLP
`andrew.mason@klarquist.com
`todd.siegel@klarquist.com
`cameron.clawson@klarquist.com
`claire.green@klarquist.com
`
`Ali R. Sharifahmadian
`Paul Margulies A
`RNOLD & PORTER KAYE SCHOLER LLP
`ali.sharifahmadian@arnoldporter.com
`paul.margulies@arnoldporter.com
`
`Christopher T.L. Douglas
`Lauren N. Griffin
`ALSTON & BIRD LLP
`christopher.douglas@alston.com
`lauren.griffin@alston.com
`
`For PATENT OWNER:
`
`Reza Mirzaie
`Philip Wang
`RUSS AUGUST & KABAT
`rmirzaie@raklaw.com
`pwang@raklaw.com
`
`
`5
`
`

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