Paper 22
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., and QUALCOMM INCORPORATED,
`Petitioner,
`v.
`DAEDALUS PRIME LLC,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2023-00547 (Patent 10,705,588 B2)
`IPR2023-00550 (Patent 8,775,833 B2)
`IPR2023-00567 (Patent 10,049,080 B2)
`IPR2023-00617 (Patent 8,898,494 B2)1
`
`
`Before WILLIAM V. SAINDON, THOMAS L. GIANNETTI,
`ARTHUR M. PESLAK, and KRISTI L. R. SAWERT, Administrative Patent
`Judges. 2
`
`PER CURIAM.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317;37 C.F.R. § 42.74
`
`
`1 The parties are not authorized to use this style caption.
`2 This is not an expanded panel. The panel for IPR2023-00547 and
`IPR2023-00550 includes Judges Saindon, Peslak, and Sawert. The panel for
`IPR2023-00567 and IPR2023-00617 includes Judges Saindon, Giannetti,
`and Sawert.
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., and QUALCOMM INCORPORATED,
`Petitioner,
`v.
`DAEDALUS PRIME LLC,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2023-00547 (Patent 10,705,588 B2)
`IPR2023-00550 (Patent 8,775,833 B2)
`IPR2023-00567 (Patent 10,049,080 B2)
`IPR2023-00617 (Patent 8,898,494 B2)1
`
`
`Before WILLIAM V. SAINDON, THOMAS L. GIANNETTI,
`ARTHUR M. PESLAK, and KRISTI L. R. SAWERT, Administrative Patent
`Judges. 2
`
`PER CURIAM.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317;37 C.F.R. § 42.74
`
`
`1 The parties are not authorized to use this style caption.
`2 This is not an expanded panel. The panel for IPR2023-00547 and
`IPR2023-00550 includes Judges Saindon, Peslak, and Sawert. The panel for
`IPR2023-00567 and IPR2023-00617 includes Judges Saindon, Giannetti,
`and Sawert.
`
`
`
`IPR2023-00547 (Patent 10,705,588 B2)
`IPR2023-00550 (Patent 8,775,833 B2)
`IPR2023-00567 (Patent 10,049,080 B2)
`IPR2023-00617 (Patent 8,898,494 B2)
`
`
`INTRODUCTION
`I.
`With the Board’s authorization, Petitioner (Qualcomm Incorporated)
`and Patent Owner (Daedalus Prime LLC) filed a Joint Motion to Terminate
`in each of the above-identified proceedings. Paper 21 (“Joint Motion”).3 In
`support of each Joint Motion, Petitioner and Patent Owner filed a copy of a
`Settlement Agreement (Ex. 1039) and request that the Settlement Agreement
`be treated as business confidential information pursuant to 37 C.F.R. § 42.74
`(Paper 21, 3).
`
`II. DISCUSSION
`In the Joint Motions, Petitioner and Patent Owner represent that they
`have reached an agreement to jointly seek termination of the above-
`identified inter partes review proceedings and that the filed copy of the
`Settlement Agreement is a true and complete copy. Paper 21, 1–2; see also
`37 C.F.R. § 42.74(b) (requiring a “true copy” of any agreement to be filed
`with the Board). Petitioner and Patent Owner state that “there are no other
`agreements or understandings between Patent Owner and Petitioner, or any
`collateral agreements referred to in the Agreement, made in connection with,
`or in contemplation of, the termination of the proceeding[s].” Paper 21, 1;
`see also 37 C.F.R. § 42.74(b) (requiring “Any agreement or understanding
`between the parties” to be filed with the Board (emphasis added)).
`
`
`3 This decision cites to papers and exhibits in IPR2023-00547.
`Corresponding items were filed in IPR2023-00550, IPR2023-00567, and
`IPR2023-00617.
`
`2
`
`
`
`IPR2023-00547 (Patent 10,705,588 B2)
`IPR2023-00550 (Patent 8,775,833 B2)
`IPR2023-00567 (Patent 10,049,080 B2)
`IPR2023-00617 (Patent 8,898,494 B2)
`
`Petitioner and Patent Owner also state that Settlement Agreement resolves
`all currently pending proceedings between Petitioner and Patent Owner
`involving the above-identified patents at issue. Paper 21, 1–2.
`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.”
`Section 35 U.S.C. § 317(a) also provides that if no petitioner remains in the
`inter partes review, the Office may terminate the review. This proceeding is
`at an intermediate stage. The Parties have not filed substantive briefing after
`institution. We have not yet decided the merits of this proceeding, and a
`final written decision has not been entered in this proceeding. Terminating
`this proceeding will save the Board administrative and judicial resources,
`e.g., in conducting an oral argument and issuing a final written decision to
`decide the patentability issues raised in the Petition. Furthermore, there are
`strong public policy reasons to favor settlement between the parties to a
`proceeding. PATENT TRIAL AND APPEAL BOARD CONSOLIDATED TRIAL
`PRACTICE GUIDE, 84 Fed. Reg. 64,280 (Nov. 21, 2019). Under these
`circumstances, and in view of the Parties’ settlement and representations, we
`determine that good cause exists to terminate these proceedings.
`Accordingly, we grant the Joint Motion in each proceeding.
`Petitioner and Patent Owner also request that the Settlement
`Agreement be treated as business confidential information and be kept
`separate from the files of the patents involved in these inter partes review
`
`3
`
`
`
`IPR2023-00547 (Patent 10,705,588 B2)
`IPR2023-00550 (Patent 8,775,833 B2)
`IPR2023-00567 (Patent 10,049,080 B2)
`IPR2023-00617 (Patent 8,898,494 B2)
`
`proceedings. Paper 21, 3. We have reviewed the Settlement Agreement,
`which contains confidential business information regarding the terms of
`settlement, and we determine that good cause exists to treat the Settlement
`Agreement as business confidential information and to keep them separate
`from the file of the patent in each the above-identified proceedings pursuant
`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Accordingly, we grant the
`Parties request.
`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 to Terminate in each of the above-
`identified proceedings is granted, and the proceedings are terminated;
`
`FURTHER ORDERED that the Parties’ request to treat the Settlement
`Agreement as business confidential information in each of the above-
`identified proceedings is granted, and the Settlement Agreement shall be
`kept separate from the files of U.S. Patents 10,705,588 B2; 8,775,833 B2;
`10,049,080 B2; and 8,898,494 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
`
`
`
`IPR2023-00547 (Patent 10,705,588 B2)
`IPR2023-00550 (Patent 8,775,833 B2)
`IPR2023-00567 (Patent 10,049,080 B2)
`IPR2023-00617 (Patent 8,898,494 B2)
`
`FOR PETITIONER:
`William M. Fink
`Benjamin Haber
`Nicholas J. Whilt
`Brian Cook
`O’MELVENY & MYERS LLP
`tfink@omm.com
`bhaber@omm.com
`nwhilt@omm.com
`bcook@omm.com
`
`Daniel Leventhal
`Richard Zembek
`Darren Smith
`Eagle H. Robinson
`NORTON ROSE FULBRIGHT
`daniel.leventhal@nortonrosefulbright.com
`richard.zembek@nortonrosefulbright.com
`darren.smith@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
`
`FOR PATENT OWNER:
`Peter F. Snell
`Adam Rizk
`Michael T. Renaud
`Serge Subach
`Michael J. McNamara
`Suparna Datta
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`pfsnell@mintz.com
`arizk@mintz.com
`mtrenaud@mintz.com
`ssubach@mintz.com
`mmcnamara@mintz.com
`sdatta@mintz.com
`
`5
`
`
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