Trials@uspto.gov
`571-272-7822
`
`
` Paper 11
`
`
` Date: June 27, 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.
`
`
`
`
`
`
`
`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.
`
`
`
`
`DECISION
`Settlement as to Samsung Prior to Institution of Trial
`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.
`
`
`571-272-7822
`
`
` Paper 11
`
`
` Date: June 27, 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.
`
`
`
`
`
`
`
`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.
`
`
`
`
`DECISION
`Settlement as to Samsung Prior to Institution of Trial
`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 Samsung Electronics Co.,
`Ltd. and Samsung Electronics America, Inc. (collectively “Samsung”) and
`Patent Owner Daedalus Prime LLC (“Daedalus”) filed a Joint Motion to
`Terminate as to Petitioner Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. in each of the above-identified proceedings.
`Paper 10 (“Joint Motion”).3 In support of each Joint Motion, Samsung and
`Daedalus filed a copy of a Settlement Agreement (Ex. 1031) and a Joint
`Request to Treat the Settlement Agreement as Business Confidential
`Information pursuant to 37 C.F.R. § 42.74. Paper 9 (“Joint Request”).
`
`II. DISCUSSION
`In the Joint Motions, Samsung and Daedalus represent that they have
`reached an agreement to jointly seek termination of the above-identified
`inter partes review proceedings with respect to Samsung, and that the filed
`copy of the Settlement Agreement is a true and complete copy. Paper 10;
`37 C.F.R. § 42.74(b) (requiring a “true copy” of any agreement to be filed
`with the Board). Samsung and Daedalus state that “there are no other
`agreements, oral or written, between Daedalus and Samsung made in
`connection with, or in contemplation of, the termination of the
`proceeding[s].” Paper 10; 37 C.F.R. § 42.74(b) (requiring “Any agreement
`
`
`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)
`
`or understanding between the parties” to be filed with the Board (emphasis
`added)). The Settlement Agreement indicates that it resolves all currently
`pending proceedings between Samsung and Daedalus involving the above-
`identified patents at issue. Ex. 1031, 1–2.
`These proceedings are at an early stage, and we have not yet decided
`whether to institute trial in any of the proceedings. In view of the early stage
`of the proceedings and the settlement between Samsung and Daedalus,
`which resolves all proceedings involving the Parties and the above-identified
`patents, we determine that good cause exists to terminate the proceedings as
`to Samsung. Qualcomm Incorporated remains as Petitioner in the
`proceedings.
`Samsung and Daedalus also filed Joint Requests 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
`proceedings. Paper 9. After reviewing the Settlement Agreement between
`Samsung and Daedalus, we find that the Settlement Agreement contains
`confidential business information regarding the terms of settlement. We
`determine that good cause exists to treat the Settlement Agreement between
`Samsung and Daedalus as business confidential information pursuant to
`37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`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)
`
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion to Terminate as to Petitioner
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in
`each of the above-identified proceedings is granted, and the proceedings are
`terminated only as to Samsung;
`FURTHER ORDERED that Qualcomm Incorporated will remain as
`Petitioner in each of the above-identified proceedings, and the proceedings
`will continue;
`
`FURTHER ORDERED that the Joint 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); and
`
`FURTHER ORDERED that the caption for each of the above-
`identified proceedings is modified as set forth in the attached Exhibit. The
`remaining parties are directed to use this caption in all further filings.
`
`
`
`
`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
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`pfsnell@mintz.com
`arizk@mintz.com
`mtrenaud@mintz.com
`ssubach@mintz.com
`
`
`
`
`5
`
`
`
`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)
`
`
`
`EXHIBIT: Sample Case Caption
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`QUALCOMM INCORPORATED,
`Petitioner,
`v.
`DAEDALUS PRIME LLC,
`Patent Owner.
`
`Case IPR2023-00XXX
`Patent XX,XXX,XXX B2
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
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