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Paper No. 9
`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 FILE SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION PURSUANT
`TO 35 U.S.C. § 317(b)
`
`
`
`
`
`
`
`
`

`

`U.S. Patent No. 7,825,537
`Case IPR2022-01559
`
`INTRODUCTION
`Petitioner and Patent Owner are filing a Joint Motion to Terminate Proceeding
`
`along with a settlement agreement that resolves all underlying disputes between the
`
`parties, including this proceeding. In an email dated April 4, 2023, the Board
`
`authorized the parties to file a true copy of the agreement between Petitioner and
`
`Patent Owner made in connection with or in contemplation of termination of this
`
`proceeding. As authorized by the Board, the parties are submitting a true copy of the
`
`settlement agreement as Exhibit 1037. The parties have agreed to waive service.
`
`RELIEF REQUESTED
`The rules permit the parties to have any filed agreement treated as business
`
`confidential information and kept separate from the files of the involved patent.
`
`37 C.F.R. § 42.74(c). The statute requires:
`
`At the request of a party to the proceeding, the agreement or
`understanding shall be
`treated as business confidential
`information, shall be kept separate from the file of the involved
`patents, and shall be made available only to Federal Government
`agencies on written request, or to any person on a showing of
`good cause.
`
`35 U.S.C. § 317(b).
`
`Pursuant to 37 C.F.R. § 42.74(c) and 35 U.S.C. § 317(b), Petitioner and Patent
`
`Owner jointly request that the Office treat the settlement agreement (Exhibit 1037)
`
`as business confidential information, that the settlement agreement be kept separate
`1
`
`
`
`

`

`U.S. Patent No. 7,825,537
`Case IPR2022-01559
`from the file of the involved patent, and that the settlement agreement be made
`
`available only to Federal Government agencies on written request, or to other
`
`persons only on a showing of good cause.
`
`Dated: April 5, 2023
`
`Dated: April 5, 2023
`
`
`
`
`
`
`
`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
`
`2
`
`

`

`U.S. Patent No. 7,825,537
`Case IPR2022-01559
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), I, Lauren K. Young, certify that on April 5,
`
`2023, a copy of the foregoing JOINT MOTION TO FILE SETTLEMENT
`
`AGREEMENT AS BUSINESS CONFIDENTIAL INFORMATION
`
`PURSUANT TO 35 U.S.C. § 317(b) 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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`
`
`
`
`3
`
`

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