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Volkswagen Group of America, Inc. v. Scramoge Technology Ltd.

Docket IPR2022-01559, Patent Trial and Appeal Board (Sept. 23, 2022)
Jameson Lee, Kristina Kalan, Michelle Wormmeester, presiding
Case TypeInter Partes Review
Patent
7825537
Patent Owner Scramoge Technology Ltd.
Petitioner Volkswagen Group of America, Inc.
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13 Notice refund approved: Notice refund approved

Document IPR2022-01559, No. 13 Notice refund approved - Notice refund approved (P.T.A.B. Apr. 17, 2023)
Petitioner’s request for a refund of certain post-institution fees paid on September 23, 2022, in the above proceeding is hereby granted.
The amount of $28,500.00 has been refunded to Petitioner’s deposit account.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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11 Termination Decision Pre DI settlement: Termination Decision Pre DI settlement

Document IPR2022-01559, No. 11 Termination Decision Pre DI settlement - Termination Decision Pre DI settlement (P.T.A.B. Apr. 7, 2023)
On April 5, 2023, the parties filed a joint motion to terminate the above-identified proceeding pursuant to a settlement agreement.
The parties also filed a copy of their settlement agreement made in connection with the termination of the instant proceeding.
Paper 9 (Joint Motion to File Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317(b)).
The parties further represent that “there are no collateral agreements or understandings made in connection with or in contemplation of terminating this proceeding.” Id.
Accordingly, it is: ORDERED that the Joint Motion to Terminate Proceeding is granted, the Petition is dismissed, and the proceeding is terminated; and FURTHER ORDERED that the Joint Motion to File Settlement Agreement as Business Confidential Information is granted, and the settlement agreement shall be treated as business confidential information, kept separate from the file of the above-identified patent, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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7 Notice Notice filing date accorded: Notice Notice filing date accorded

Document IPR2022-01559, No. 7 Notice Notice filing date accorded - Notice Notice filing date accorded (P.T.A.B. Oct. 13, 2022)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2022-01559 Patent No. 7,825,537 mediation, etc.) was used and the general result.
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8 Motion Motion to dismiss due to settlement pre DI: 537 Joint Motion to Terminate Proceeding

Document IPR2022-01559, No. 8 Motion Motion to dismiss due to settlement pre DI - 537 Joint Motion to Terminate Proceeding (P.T.A.B. Apr. 5, 2023)
Petitioner Volkswagen Group of America, Inc. and Patent Owner Scramoge Technology Ltd. have made an agreement that resolves all underlying disputes between the parties, including this proceeding.
As required by the Board, the parties are submitting a true copy of the settlement agreement as Exhibit 1037, along with this Joint Motion to Terminate Proceeding and a Joint Motion to File Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317(b).
Joint motion to sever joinder and terminate proceeding withrespect to co-petitioner Volkswagen filed in IPR2022-01309.
Petitioner and Patent Owner jointly request that the Board terminate this proceeding in its entirety in view of the agreement the parties are filing.
For the forgoing reasons, Petitioner and Patent Owner jointly request that the Board terminate this proceeding in its entirety.
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9 Motion Other: ‘537 Joint Motion to File Settlement Agreement as Business Confidential Information

Document IPR2022-01559, No. 9 Motion Other - ‘537 Joint Motion to File Settlement Agreement as Business Confidential Information (P.T.A.B. Apr. 5, 2023)
Petitioner and Patent Owner are filing a Joint Motion to Terminate Proceeding along with a settlement agreement that resolves all underlying disputes between the parties, including this proceeding.
In an email dated April 4, 2023, the Board authorized the parties to file a true copy of the agreement between Petitioner and Patent Owner made in connection with or in contemplation of termination of this proceeding.
As authorized by the Board, the parties are submitting a true copy of the settlement agreement as Exhibit 1037.
The statute requires: At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be 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 35 U.S.C. § 317(b), Petitioner and Patent Owner jointly request that the Office treat the settlement agreement (Exhibit 1037) as business confidential information, that the settlement agreement be kept separate U.S. Patent No. 7,825,537 Case IPR2022-01559 from the file of the involved patent, and that the settlement agreement be made available only to Federal Government agencies on written request, or to other persons only on a showing of good cause.
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2 Petition: Petition for Inter Partes Review of US Patent No 7,825,537

Document IPR2022-01559, No. 2 Petition - Petition for Inter Partes Review of US Patent No 7,825,537 (P.T.A.B. Sep. 23, 2022)
D. Level of Ordinary Skill POSITAs as of November 14, 2008 would have had a bachelor’s degree in electrical engineering, physics, or equivalent training, and two years of experience working with power circuit design.
Element [12d] Baarman renders obvious “a control circuit configured for monitoring at least one parameter indicative of an efficiency of power transfer from said base unit to said target unit” for reasons previously discussed.
Element [12e] Baarman renders obvious “automatically adjusting at least one characteristic of said time varying electric current responsive to said parameter to maximize an efficiency of power transfer from said base unit to said target unit” for reasons previously discussed.
To the extent Scramoge argues that adaptive inductive power supply 305 does not disclose claim 23’s DC-DC converter because Baarman depicts a different topology from the ’537 patent’s figures, that argument conflicts with the claim’s requirements.
POSITAs would have understood such substitutions of a target unit would result in automatically adjusting frequency or duty cycle responsive to said parameter to maximize power transfer efficiency for reasons previously discussed.
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12 Other Refund request: 537 Petitioners Request for Refund

Document IPR2022-01559, No. 12 Other Refund request - 537 Petitioners Request for Refund (P.T.A.B. Apr. 12, 2023)
a petition for inter partes review of claims 1-28 of U.S. Patent No. 7,825,537, Paper No. 2.
In accordance with 37 C.F.R. § 42.15(a)(2), the post-institution fees paid at the time of filing should be returned.
Petitioner hereby requests a refund of $28,500.00 for the post-institution fees paid at the time of filing as set forth in 37 C.F.R. § 42.15(a)(2)-(3).
The payment was provided via PTO Account No. 060916 and processed in PTAB End To End System (PTAB E2E) on September 23, 2022.
If more information is necessary to provide payment, please contact counsel listed below.
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