Paper No. 8
`Filed: April 5, 2023
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Volkswagen Group of America, Inc.,
`
`Petitioner
`
`v.
`
`Scramoge Technology Ltd.,
`
`Patent Owner
`
`
`Patent No. 7,825,537
`Filing Date: November 14, 2008
`Issue Date: November 2, 2010
`
`Title: Inductive Power Transfer System and Method
`
`
`Inter Partes Review No. IPR2022-01559
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`
`Filed: April 5, 2023
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Volkswagen Group of America, Inc.,
`
`Petitioner
`
`v.
`
`Scramoge Technology Ltd.,
`
`Patent Owner
`
`
`Patent No. 7,825,537
`Filing Date: November 14, 2008
`Issue Date: November 2, 2010
`
`Title: Inductive Power Transfer System and Method
`
`
`Inter Partes Review No. IPR2022-01559
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,825,537
`Case IPR2022-01559
`
`INTRODUCTION
`Petitioner Volkswagen Group of America, Inc. and Patent Owner Scramoge
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`Technology Ltd. have made an agreement that resolves all underlying disputes
`
`between the parties, including this proceeding. In an email dated April 4, 2023, the
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`Board authorized the parties to file a joint motion to terminate this proceeding and a
`
`joint motion to file their settlement agreement as business confidential information.
`
`As required by the Board, the parties are submitting a true copy of the
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`settlement agreement as Exhibit 1037, along with this Joint Motion to Terminate
`
`Proceeding and a Joint Motion to File Settlement Agreement as Business
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`Confidential Information Pursuant to 35 U.S.C. § 317(b). The parties have agreed to
`
`waive service of the agreement.
`
`The parties jointly certify that, aside from the settlement agreement, there are
`
`no collateral agreements or understandings made in connection with or in
`
`contemplation of terminating this proceeding. The settlement agreement filed as
`
`Exhibit 1037 supersedes any other agreements or term sheets that may relate to the
`
`termination of this proceeding.
`
`
`
`
`
`
`
`1
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`
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`STATUS OF PROCEEDINGS
`
`U.S. Patent No. 7,825,537
`Case IPR2022-01559
`
`The following are the only proceedings either between the parties in the
`
`United States or that involve the subject patent:
`
`U.S.PatentNos.|Status
`Scramoge Technology
`7,825,537
`Joint motion to dismiss in
`Limited v. Volkswagen
`view of settlementis
`AG, Case No. 2-22-cv-
`forthcoming.
`10730 (E.D. Mich.)
`
`10,193,392
`
`10,243,400 10,546,685
`
`U.S.PatentNo.|Status
`IPR2022-01559
`7,825,537
`Above-captioned
`
`
`
`pe proceeding;thismotionto
`
`IPR2022-00529
`
`10,193,392
`
`IPR2022-01309
`
`10,193,392
`
`IPR2022-01543
`
`10,243,400
`
`IPR2022-01354
`
`10,546,685
`
`terminateis filed.
`Joint motion to sever
`joinder and terminate
`proceeding withrespect to
`co-petitioner Volkswagen
`filed in IPR2022-01309.
`
`Joint motion to terminate
`being filed same day as
`this joint motion to
`terminate.
`Joint motion to terminate
`being filed same day as
`this joint motionto
`terminate.
`Joint motion to terminate
`being filed same day as
`this joint motionto
`terminate.
`
`
`
`
`
`U.S. Patent No. 7,825,537
`Case IPR2022-01559
`
`RELIEF REQUESTED
`Petitioner and Patent Owner jointly request that the Board terminate this
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`proceeding in its entirety in view of the agreement the parties are filing. That
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`agreement ends all patent disputes between the parties, including this proceeding.
`
`Both Congress and the federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
`
`U.S. 346, 352 (1981) (“The purpose of [Federal Rule of Civil Procedure] 68 is to
`
`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575,
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`1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S.
`
`950 (1986). The U.S. Court of Appeals for the Federal Circuit also places a
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`particularly strong emphasis on settlement. See Cheyenne River Sioux Tribe v. US.,
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`806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
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`antagonism and hostility between parties). Moreover, the Board generally expects
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`that a proceeding will terminate after the filing of a settlement. See, e.g., Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Maintaining this proceeding after settlement between Patent Owner and
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`Petitioner would discourage future settlements by removing a primary motivation
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`for settlement, which is eliminating litigation risk by resolving the parties’ disputes
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`and ending the pending proceedings between them. For patent owners, litigation
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`risks include the potential for an invalidity ruling against their patents. If a patent
`
`
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`3
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`
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`U.S. Patent No. 7,825,537
`Case IPR2022-01559
`owner knows that an inter partes review will likely continue regardless of
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`settlement, it creates a strong disincentive for the patent owner to settle.
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`CONCLUSION
`For the forgoing reasons, Petitioner and Patent Owner jointly request that the
`
`Board terminate this proceeding in its entirety.
`
`
`
`Dated: April 5, 2023
`
`Dated: April 5, 2023
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`
`
`
`
`
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`Respectfully submitted,
`
`
`By: /Elliot C. Cook/
`Elliot C. Cook, Reg.# 61,769
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190-6023
`Telephone: (571) 203-2738
`Facsimile: (202) 408-4400
`
`Lead Counsel for Petitioner
`
`
`By: /Brett Cooper/
`Brett Cooper, Reg.# 55,085
`BC LAW GROUP, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`Telephone: (212) 951-0100
`bcooper@bc-lawgroup.com
`
`Lead Counsel for Patent Owner
`
`
`4
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`U.S. Patent No. 7,825,537
`Case IPR2022-01559
`
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`CERTIFICATE OF SERVICE
`
`
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`Pursuant to 37 C.F.R. § 42.6(e), I, Lauren K. Young, certify that on April 5,
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`2023, a copy of the foregoing JOINT MOTION TO TERMINATE
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`PROCEEDING was served via email to counsel of record for Patent Owner at the
`
`following:
`
`Brett Cooper (Reg. No. 55,085)
`E-mail: bcooper@bc-lawgroup.com
` Scramoge_Counsel@ b-clg.com
`
`Robert A. Auchter (Reg. No. 38,069)
`E-mail: robert@auchterlaw.com
`
`
`
`Patent Owner has agreed to electronic service.
`
`Dated: April 5, 2023
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`
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`5
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