UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`GREENTHREAD LLC,
`Patent Owner.
`_______________
`
`IPR2020-00289
`Patent 8,421,195 B2
`_______________
`
`
`Before ROBERT J. WEINSCHENK, MINN CHUNG, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`CIRRUS EX. 1044 - 1/5
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`GREENTHREAD LLC,
`Patent Owner.
`_______________
`
`IPR2020-00289
`Patent 8,421,195 B2
`_______________
`
`
`Before ROBERT J. WEINSCHENK, MINN CHUNG, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`CIRRUS EX. 1044 - 1/5
`
`
`
`INTRODUCTION
`I.
`With Board authorization, Samsung Electronics Co., Ltd.
`(“Petitioner”) and Greenthread LLC (“Patent Owner”) filed a Joint Motion
`to Dismiss. Paper 10 (“Motion” or “Mot.”). In the Motion, the parties state
`that they have settled their dispute regarding U.S. Patent No. 8,421,195 B2
`(“the ’195 patent”), “by virtue of a series of agreements (‘Agreements’) to
`which Patent Owner and Petitioner are parties and/or beneficiaries, and the
`terms of which are confidential.” Mot. 1. The parties also filed what they
`indicate are “true copies” of the written Agreements. Id.; Exs. 2018, 2019,
`2020. Id.
`In addition, the parties filed a Joint Motion to Seal (Paper 11, “Motion
`to Seal”), requesting that Exhibits 2018, 2019, and 2020 be treated as
`business confidential information and be kept separate from the files of
`the ’195 patent. Motion to Seal 2; Mot. 1. In the Motion to Seal, the parties
`also seek entry of the Default Protective Order provided in Appendix B of
`the Trial Practice Guide and request that Exhibit 2018 be made available to
`the Board and the filing party only. Motion to Seal 2. Although the Motion
`to Seal is jointly filed, the parties state that they agree “Patent Owner is the
`‘filing party’ for purposes of restricting access to Exhibit 2018.” Id. at 2 n.1.
`The parties represent that “Petitioner is a party to Exhibits 2019 and 2020
`but is not a party to Exhibit 2018” and that they “agree that Exhibit 2018
`should be available only to the Board and the filing party.” Id. at 2–3.
`
`II. ANALYSIS
`This proceeding is in the preliminary stage, and no decision whether
`to institute a trial has been made. The parties indicate that the Agreements
`resolve all disputes between the parties regarding the ’195 patent. Mot. 1.
`
`CIRRUS EX. 1044 - 2/5
`
`
`
`The parties also certify that there is no other “agreement or understanding
`between the patent owner and a petitioner, including any collateral
`agreements referred to in such agreement or understanding, made in
`connection with, or in contemplation of, the termination” of this proceeding.
`Id. at 2. Under these circumstances, we determine that it is appropriate to
`dismiss the Petition (Paper 2) and terminate this proceeding. See 37 C.F.R.
`§§ 42.71(a), 42.74(a).
`After reviewing the written Agreements, we find the Agreements
`contain business confidential information regarding the terms of the
`settlement and good cause exists to treat the Agreements as business
`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`Thus, to the extent the Joint Motion to Seal requests Exhibits 2018, 2019,
`and 2020 be treated as business confidential information and be kept
`separate from the files of the ’195 patent under 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c), the parties’ request is granted.
`As for the parties’ request for entry of the Default Protective Order
`and restricting access to Exhibit 2018 to the Board and Patent Owner only,
`we note that both parties are allowed access to confidential information
`under the Default Protective Order. See Default Protective Order § 2(A)
`(Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated,
`at 117). Thus, entry of the Default Protective Order would not restrict
`access to Exhibit 2018 as requested by the parties.
`Accordingly, the parties are instructed to contact the Board within
`5 business days of entry of this Decision to schedule a conference call with
`the Board to discuss options for filing or re-filing of any necessary motions
`
`CIRRUS EX. 1044 - 3/5
`
`
`
`regarding treatment of Exhibit 2018. In the meantime, Exhibit 2018 will
`remain designated Confidential/Restricted, as filed, until further notice from
`this panel.
`
`III. ORDER
`
`It is hereby
`ORDERED that the Joint Motion to Dismiss is granted;
`FURTHER ORDERED that the parties’ joint request to treat the
`Agreements (Exhibits 2018, 2019, and 2020) as business confidential
`information and be kept separate from the files of the ’195 patent under the
`provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted;
`FURTHER ORDERED that the parties shall request a conference call
`with the panel within 5 business days of entry of this Decision to discuss
`options for filing or re-filing any necessary motions regarding treatment of
`Exhibit 2018;
`FURTHER ORDERED that Exhibit 2018 shall remain designated
`Confidential/Restricted, as filed, until further notice from this panel; and
`FURTHER ORDERED that the Petition is dismissed and this
`proceeding is terminated as to all parties.
`
`CIRRUS EX. 1044 - 4/5
`
`
`
`FOR PETITIONER:
`
`Walter Renner
`David Holt
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`Holt2@fr.com
`
`
`FOR PATENT OWNER:
`
`Cyrus Morton
`Rajin Olson
`ROBINS KAPLAN LLP
`cmorton@roinskaplan.com
`rolson@robinskaplan.com
`
`
`CIRRUS EX. 1044 - 5/5
`
`
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