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Google LLC v. Scramoge Technology Ltd.

Docket IPR2022-00683, Patent Trial and Appeal Board (Mar. 8, 2022)
Brian McNamara, Jameson Lee, Karl Easthom, Kristina Kalan, Michelle Wormmeester, presiding
Case TypeInter Partes Review
Patent
7825537
Patent Owner Scramoge Technology Ltd.
Petitioner Google LLC
Petitioner Samsung Electronics
...
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15 Notice refund approved: Notice refund approved

Document IPR2022-00683, No. 15 Notice refund approved - Notice refund approved (P.T.A.B. Nov. 8, 2022)
GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., and
Patent 7,825,537 Mailed: November 8, 2022
Petitioner’s request for a refund of certain post-institution fees paid on March 8, 2022, in the above proceeding is hereby granted.
The amount of $22,500.00 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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13 Termination Decision Pre DI settlement: Termination Decision DECISION Settlement Prior to Institution of Trial 37 CFR § 4274

Document IPR2022-00683, No. 13 Termination Decision Pre DI settlement - Termination Decision DECISION Settlement Prior to Institution of Trial 37 CFR § 4274 (P.T.A.B. Sep. 26, 2022)
On September 1, 2022, with the Board’s authorization, Google LLC (“Petitioner”) and Scramoge Technology Ltd. (“Patent Owner”) (collectively, “the parties”) filed a Joint Motion to Terminate (“Joint Motion”) in each of the above-identified proceedings due to settlement of the parties’ disputes.
The parties also filed, in each of the above-identified proceedings, a Joint Request to Keep Separate that requests the Board to treat the Settlement Agreement as business confidential information and to keep it separate from the publicly available files in the above-identified proceedings.
In the Joint Motion, the parties represent that they have reached an agreement to seek termination of the above-identified inter partes review proceedings under 37 C.F.R. § 42.74.
In view of the early stage of the above-identified proceedings, and the settlement between the parties, we determine that good cause exists to dismiss the petitions and terminate the above-identified proceedings with respect to the parties.
We determine that good cause exists to treat the Settlement Agreement between the parties as business confidential information and to keep it separate from the files of the patent in the above-identified proceedings pursuant to 37 C.F.R. § 42.74(c).
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10 Order Other: Order Other

Document IPR2022-00683, No. 10 Order Other - Order Other (P.T.A.B. Aug. 30, 2022)
On August 9, 2022, we authorized Samsung and Patent Owner via email to file a joint motion to terminate the above- identified proceedings.
Paper 9.3 In each of the above- identified proceedings, Samsung and Patent Owner also filed a copy of their Patent License Agreement (Ex. 10334) and their Escrow Agreement (Ex. 1034) (collectively “Settlement Agreement”), as well as a Joint Request to Keep Separate (“Joint Request”) that requests the Board to treat the Settlement Agreement as business confidential information and to keep it separate from the publicly available files in the above-identified proceedings.
In the Joint Motion, Samsung and Patent Owner represent that they have reached an agreement to jointly seek termination of Samsung as 3 For purposes of expediency, we cite to Papers filed in IPR2022-00478.
In the Joint Request, Samsung and Patent Owner requested that the Settlement Agreement be treated as business confidential information and be kept separate from the files of the above-identified patents.
We determine that good cause exists to treat the Settlement Agreement between Samsung and Patent Owner as business confidential information 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 OF FILING DATE ACCORDED TO PETITION AND TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE

Document IPR2022-00683, No. 7 Notice Notice filing date accorded - Notice NOTICE OF FILING DATE ACCORDED TO PETITION AND TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE (P....
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 IPR2022-00683 Patent No. 7,825,537 mediation, etc.) was used and the general result.
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12 Other Not for motions: Joint Request to Keep Separate

Document IPR2022-00683, No. 12 Other Not for motions - Joint Request to Keep Separate (P.T.A.B. Sep. 1, 2022)
GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., and
(“Petitioner”) and Patent Owner Scramoge Technology Ltd. (“Patent Owner”) (collectively, the “parties”) jointly request that Exhibit 1020, a true copy of the written Settlement and License Agreement (dated August 29, 2022) between the Parties, which is referenced in the Joint Motion to Terminate, be treated as business confidential information and be kept separate from the file of the involved Respectfully submitted,
/Brett Cooper/ Brett Cooper Counsel for Patent Owner Reg. No. 55,085 Russ, August & Kabat 12424 Wilshire Blvd.
12th Floor Los Angeles, CA 90025 Tel.
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11 Motion: Petitioner Google LLC and Patent Owners Joint Motion to Terminate

Document IPR2022-00683, No. 11 Motion - Petitioner Google LLC and Patent Owners Joint Motion to Terminate (P.T.A.B. Sep. 1, 2022)

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8 Motion: Joint Motion to Terminate Inter Partes Review With Respect to Petitioner Samsung Electronics Co, Ltd, and Samsung Electronics America, Inc Only

Document IPR2022-00683, No. 8 Motion - Joint Motion to Terminate Inter Partes Review With Respect to Petitioner Samsung Electronics Co, Ltd, and Samsung Electronics America, Inc Only (P.T.A.B. Aug...
As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a copy of the settlement agreement that resolves the disputes in the above-captioned inter partes review relating to the Patent-in-Suit as between Scramoge and Samsung is filed herewith as an exhibit.
The parties jointly request that the Board terminate the inter partes review of the Patent-in-Suit, Case IPR2022-683 with respect to Petitioner Samsung only.
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 request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” This inter partes review is still in its early stages.
Scramoge and Samsung have settled all disputes relating to the Patent-in- U.S. Patent No. 7,825,537 Petition for Inter Partes Review Suit.
This inter partes review is in an early stage, and the Board has not entered a final written decision on the merits in this proceeding.
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