Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: May 15, 2023
`
`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.
`_______________
`
`Cases IPR2023-00547 (Patent 10,705,588 B2);
`IPR2023-00550 (Patent 8,775,833 B2);
`IPR2023-00567 (Patent 10,049,080 B2); and
`IPR2023-00617 (Patent 8,898,494 B2)
`_______________
`
`
`Before WILLIAM V. SAINDON, THOMAS L. GIANNETTI,
`ARTHUR M. PESLAK, KRISTI L. R. SAWERT, Administrative Patent
`Judges. 1
`
`SAWERT, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This is not an expanded panel. The panel for IPR2023-00547 and -00550
`includes Judges Saindon, Peslak, and Sawert. The panel for IPR2023-00567
`and -00617 includes Judges Saindon, Giannetti, and Sawert.
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: May 15, 2023
`
`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.
`_______________
`
`Cases IPR2023-00547 (Patent 10,705,588 B2);
`IPR2023-00550 (Patent 8,775,833 B2);
`IPR2023-00567 (Patent 10,049,080 B2); and
`IPR2023-00617 (Patent 8,898,494 B2)
`_______________
`
`
`Before WILLIAM V. SAINDON, THOMAS L. GIANNETTI,
`ARTHUR M. PESLAK, KRISTI L. R. SAWERT, Administrative Patent
`Judges. 1
`
`SAWERT, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This is not an expanded panel. The panel for IPR2023-00547 and -00550
`includes Judges Saindon, Peslak, and Sawert. The panel for IPR2023-00567
`and -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)
`
`
`In the above-referenced proceedings, Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc. (collectively, “Samsung”) and
`Qualcomm Incorporated (“Qualcomm”) filed Petitions requesting inter
`partes review of all or certain claims of U.S. Patent No. 10,705,588 B2
`(IPR2023-00547), U.S. Patent No. 8,775,833 B2 (IPR2023-0055),
`U.S. Patent No. 10,049,080 B2 (IPR2023-00567), and U.S. Patent
`No. 8,898,494 B2 (IPR2023-00617).
`Daedalus Prime LLC (“Patent Owner”) has not yet filed Preliminary
`Responses in any of these proceedings.
`On April 28, 2023, Samsung’s counsel emailed the Board and stated
`that the “underlying litigations involving the challenged patents have been
`settled, in principle, between Samsung and Daedalus.” Ex. 3001.
`Samsung’s counsel stated that Samsung no longer seeks to pursue these inter
`partes reviews, and “[t]o prevent the parties from expending further
`resources while the settlement is being finalized, Samsung asks for a pause
`of all [Patent Owner Preliminary Response] deadlines for 30 days to allow
`Samsung and Daedalus to finalize their agreement.” Id. Samsung’s counsel
`also stated that Patent Owner “does not oppose these requests,” and that
`“[c]ounsel for Qualcomm is copied on this email.” Id.
`On May 2, 2023, counsel for Qualcomm emailed the Board.
`Ex. 3002. In that email, counsel for Qualcomm stated that “Qualcomm has
`not resolved its dispute with Patent Owner and has not agreed to any stay or
`extension in [these] four proceedings.” Id. The Board held a conference call
`with counsel for Samsung, Qualcomm, and Patent Owner on May 10, 2023.
`No court reporter was present.
`
`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)
`
`
`During the call, counsel for Qualcomm and Patent Owner stated that
`they have not entered into any settlement negotiations. Counsel for
`Qualcomm, therefore, requested that Samsung’s request for extensions of
`time be denied. Counsel for Qualcomm argued that these proceedings
`should be conducted within the time periods contemplated by the statutes
`and regulations governing inter partes review. Patent Owner, however,
`requested that the due dates for filing its Patent Owner Preliminary
`Responses be extended to conserve its resources during settlement
`negotiations with Samsung.
`The panels have considered the parties’ respective arguments and
`determine that, under these circumstances, good cause exists for a 30-day
`extension of time for Patent Owner to file its Patent Owner Preliminary
`Responses in these proceedings. 37 C.F.R. § 42.5(c)(2). Although
`Qualcomm is correct that the general procedures of an inter partes review
`are designed to ensure the speedy resolution of disputes between parties,
`Qualcomm has not identified any particular prejudice that it would
`experience from a 30-day delay in these proceedings. Moreover, “[t]here are
`strong public policy reasons to favor settlement between the parties to a
`proceeding.” Patent Trial and Appeal Board, Consolidated Trial Practice
`Guide, p. 86 (Nov. 2019). 2 We determine that the benefits from settlement
`negotiations here outweigh any potential harm to Qualcomm from a 30-day
`delay, especially given that the parties have not identified any co-pending
`district-court litigations involving Qualcomm and the Patent Owner.
`
`2 Available at https://www.uspto.gov/sites/default/files/documents/
`tpgnov.pdf.
`
`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)
`
`See IPR2023-00547, Paper 6, 1; IPR2023-00550, Paper 6, 1; IPR2023-
`00567, Paper 6, 1; IPR2023-00617, Paper 6, 1.
`Accordingly, it is
`ORDERED that the due date for filing Patent Owner Preliminary
`Response in each of the above-referenced proceedings is extended by thirty
`(30) days; and
`FURTHER ORDERED that no other extensions of time will be
`granted.
`
`
`
`
`
`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)
`
`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
`
`
`PATENT OWNER:
`
`Peter F. Snell
`Adam Rizk
`Michael T. Renaud
`Serge Subach
`MINTZ, LEVIN, COHN, FERRIS,
` GLOVSKY AND POPEO, P.C. pfsnell@mintz.com
`arizk@mintz.com
`mtrenaud@mintz.com
`ssubach@mintz.com
`
`5
`
`
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