`571-272-7822
`
`Paper No. 29
`Entered: January 11, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,INC,
`Petitioner,
`
`Vv.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`Cases IPR2018-01106 & IPR2018-01108 (Patent 9,516,127 B2)
`Cases IPR2018-01113 & IPR2018-01114 (Patent 8,811,952 B2)
`Cases IPR2018-01124 & IPR2018-01125 (Patent 9,351,254 B2)
`Case IPR2018-01126 (Patent 9,516,129 B2)
`
`Before THU A. DANG, KARL D. EASTHOM,JONI Y. CHANG,
`THOMASL. GIANNETTI, ROBERT J. WEINSCHENK,and
`JACQUELINE T. HARLOW,Administrative Patent Judges. '
`
`DANG,Administrative Patent Judge.
`
`DECISION?
`Granting Joint Motion to Terminate
`37 CFR. §§ 42.71 (a) and 42.74
`
`! This is not an expanded panel ofthe Board.Itis a listing ofall the Judges
`on the panels of the above-listed proceedings.
`2 This Decision governseach case based on the commonissues presented.
`Theparties shall not employthis headingstyle.
`
`
`
`IPR2018-01106 & IPR2018-01108 (Patent 9,516,127 B2)
`IPR2018-01113 & IPR2018-01114 (Patent 8,811,952 B2)
`IPR2018-01124 & IPR2018-01125 (Patent 9,351,254 B2)
`IPR2018-01126 (Patent 9,516,129 B2)
`
`SamsungElectronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (collectively, “Petitioner’”) and SEVEN Networks, LLC (“Patent
`
`Owner’) filed a “Joint Motion to Terminate Pursuant to 35 U.S.C. § 317”
`
`(Papers 24 (“Joint Motion to Terminate”’)) and a “Joint Request to Treat
`
`Patent License and Settlement Agreementas Business Confidential
`
`Information” (Papers 25 (“Settlement Agreement”’)) in each of the above-
`captionedcases(collectively “Joint Motions”).*? The parties representthat
`
`they have reached settlement as evidenced by the written Settlement
`
`Agreement,filing a true copy of same as required under 37 C.F.R.
`
`§ 42.74(b). Paper 24; Ex. 2100. Theparties also represent that no other
`
`agreements exist between the parties concerning these cases. Paper 24,5.
`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
`requestof the petitioner and patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” As
`
`indicated in the Joint Motions, the parties are requesting termination prior to
`
`oral hearing and prior to the Board’s final written decision. Paper 24, 2. We
`also note that briefing has not been completed, as Patent Ownerhas not filed
`a Response,and Petitioner has notfiled a Reply to Patent Owner’s
`
`Response.
`
`Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
`
`understanding between the parties made in connection with, or in
`
`3 Citations refer to Case IPR2018-01126. Theparties filed materially similar
`papers in each case.
`
`
`
`IPR2018-01106 & IPR2018-01108 (Patent 9,516,127 B2)
`IPR2018-01113 & IPR2018-01114 (Patent 8,811,952 B2)
`IPR2018-01124 & IPR2018-01125 (Patent 9,351,254 B2)
`IPR2018-01126 (Patent 9,516,129 B2)
`
`contemplation of, the termination of a proceedingshall be in writing and a
`true copy shall be filed with the Board before termination ofthetrial.” As
`the parties havefiled their written settlement agreement, we determineitis
`appropriate to terminate each ofthese proceedings without renderinga Final
`Written Decision as to the patentability of challenged claims of the involved
`
`patents. See 37 C.F.R. §§ 42.72. 42.73, 42.74.
`
`It is
`
`ORDER
`
`ORDEREDthat the parties’ Joint Motion to Terminate in each of the
`above-captioned cases is granted, and each case is terminated; and
`FURTHER ORDEREDthatthe parties’ Joint Request to Treat the
`Settlement Agreement as Business Confidential Information in each ofthe
`above-captioned cases is granted, and Exhibit 2100 in each case shall be
`kept separate from the pertinentfile consistent with 37 C.F.R. § 42.74(b).
`
`
`
`IPR2018-01106 & IPR2018-01108 (Patent 9,516,127 B2)
`IPR2018-01113 & IPR2018-01114 (Patent 8,811,952 B2)
`IPR2018-01124 & IPR2018-01125 (Patent 9,351,254 B2)
`IPR2018-01126 (Patent 9,516,129 B2)
`
`PETITIONER:
`
`W. Karl Renner
`Jeremy Monaldo
`Roberto Devoto -
`Kim Leung
`FISH & RICHARDSONP.C.
`axf-ptab@fr.com
`ym@fr.com
`devoto@fr.com
`leung@fr.com
`
`PATENT OWNER:
`
`\
`
`Kenneth Weatherwax
`Nathan Lowenstein
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`Lowenstein & Weatherwax LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`
`.
`
`
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