UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., LG ELECTRONICS, INC., SAMSUNG ELECTRONICS CO.,
`LTD., AND SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners
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`v.
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`UNILOC 2017 LLC,
`Patent Owner
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`Case IPR2019-00510
`Patent 6,868,079
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`JOINT MOTION TO TERMINATE PROCEEDING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., LG ELECTRONICS, INC., SAMSUNG ELECTRONICS CO.,
`LTD., AND SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners
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`v.
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`UNILOC 2017 LLC,
`Patent Owner
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`Case IPR2019-00510
`Patent 6,868,079
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Proceeding No.: IPR2019-00510
`Attorney Docket: 39521-0060IP1
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`UPDATED EXHIBIT LIST
`U.S. Patent No. 6,868,079 to Hunt (“the ’079 Patent”)
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`Excerpts of Prosecution History of the ’079 Patent (Serial No.
`09/455,124)
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`Exhibit-1001
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`Exhibit-1002
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`Exhibit-1003
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`Declaration of Paul G. Steffes, Ph.D.
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`Exhibit-1004
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`Curriculum Vitae of Paul G. Steffes, Ph.D.
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`Exhibit-1005
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`U.S. Patent No. 4,763,325 to Wolfe et al. (“Wolfe”)
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`Exhibit-1006
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`U.S. Patent No. 6,298,052 to Bousquet et al. (“Bousquet”)
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`Exhibit-1007
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`PCT Publication WO 1992/021214 to Patsiokas et al.
`(“Patsiokas”)
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`Exhibit-1008
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`John L. Everett, Very Small Aperture Terminal (VSATs),
`Institution of Electrical Engineers (IEE), Telecommunication
`Series 28, First Edition (1992) (“Everett”) (select portions)
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`Exhibit-1009
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`C. Retnadhas, Satellite Multiple Access Protocol, IEEE
`Communications Magazine, 1980 (“Retnadhas”)
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`Exhibit-1010
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`U.S. Patent No. 6,212,360 to Fleming, III et al. (“Fleming”)
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`Exhibit-1011
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`ITU-T G.114, Transmission Systems and Media. General
`Recommendations on the Transmission Quality for an Entire
`International Telephone Connection. One-Way Transmission
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`i
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`Proceeding No.: IPR2019-00510
`Attorney Docket: 39521-0060IP1
`Time, Telecommunication Standardization Sector of ITU, 1994
`(“ITU Standards”)
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`Exhibit-1012
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`Joint Claim Construction and Prehearing Statement, District
`Court Case No. 2-18-cv-00042, (“Joint CC”)
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`Exhibit-1013
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`Exhibit A of Joint CC (“Exh-A of Joint CC”)
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`Exhibit-1014
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`Fredrick J. Hill & Gerald R. Peterson, Introduction to
`Switching Theory and Logical Design, Second Edition (1968)
`(select portions) (“Hill”)
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`Exhibit-1015
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`Newton’s Telecom Dictionary, 12th Edition (1997) (select
`portions)
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`Exhibit-1016
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`The IEEE Standard Dictionary of Electrical and Electronic
`Terms, Sixth Edition (1996) (select portions)
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`Exhibit-1017
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`Munford Declaration
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`Exhibit-1018
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`Second Declaration of Paul G. Steffes, Ph.D.
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`Exhibit-1019
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`Exhibit-1020
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`Exhibit-1021
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`Joe Flower, Iridium, Wired (November 1993) (“Iridium”)
`(select portions)
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`Honey Berman, LEOs and MEOs, Via Satellite (March 1998)
`(“Via Satellite”)
`John L. Everett, Very Small Aperture Terminal (VSATs),
`Institution of Electrical Engineers (IEE), Telecommunication
`Series 28, First Edition (1992) (“Everett-2”) (Supplemental set
`of select portions)
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`ii
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`Exhibit-1022
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`Exhibit-1023
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`Proceeding No.: IPR2019-00510
`Attorney Docket: 39521-0060IP1
`Robert G. Winch, Telecommunication Transmission Systems,
`McGraw-Hill Telecommunications, Second Edition (1998)
`(“Winch”) (select portions)
`Petitioner’s Demonstratives
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`Exhibit-1024
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`Confidential Settlement Agreement
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`iii
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`Proceeding No.: IPR2019-00510
`Attorney Docket: 39521-0060IP1
`Petitioners Samsung Electronics Co., Ltd and Samsung Electronics America
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`Inc. (“Samsung” or “Petitioner”) and Patent Owner Uniloc 2017 LLC (“Uniloc” or
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`“Patent Owner”) have reached a settlement. Pursuant to 35 U.S.C. § 317(a) and 37
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`C.F.R. § 42.74, Samsung and Patent Owner move to terminate the present inter
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`partes review proceeding with respect to Petitioner Samsung.
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`I. Statement of Facts
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`Samsung and Patent Owner have reached an agreement to resolve the Parties’
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`disputes. The settlement agreement settles (i) this proceeding and (ii) the related
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`district court litigation styled Uniloc USA, Inc. et al v. Samsung Electronics
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`America, Inc. et al, No. 2-18-cv-00042 (E.D. Tex.).
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`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ settlement agreement is in
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`writing, and a true and correct copy is being filed as Exhibit 1024. The settlement
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`agreement is being filed electronically with access to “Board Only.” A “Joint
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`Request to File Settlement Agreement as Business Confidential Information
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74” is being filed concurrently
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`with this Joint Motion to Terminate to treat the settlement agreement as business
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`confidential information and to keep it separate from the files of the involved
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`patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`1
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`Proceeding No.: IPR2019-00510
`Attorney Docket: 39521-0060IP1
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`II. Relief Requested
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`Termination of this inter partes review as to Samsung is requested, and the
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`Parties respectfully submit that such termination is justified. “There are strong
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`public policy reasons to favor settlement between the parties to a proceeding.”
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`Consolidated Trial Practice Guide 86 (Nov. 2019). “The Board expects that a
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`proceeding will terminate after the filing of a settlement agreement, unless the
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`Board has already decided the merits of the proceeding.” Id. (citing 35 U.S.C. §§
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`317(a)).
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`The Board should terminate this proceeding as to Samsung, as the Parties
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`jointly request, for the following reasons.
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`First, Samsung and Patent Owner have met the statutory requirement that they
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`file a “joint request” to terminate before the Office “has decided the merits of the
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`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review shall
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`be terminated upon such joint request “unless the Office has decided the merits of
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`the proceeding before the request for termination is filed.” There are no other
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`preconditions of 35 U.S.C. § 317(a).
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`Second, Samsung and Patent Owner have reached a settlement as to all the
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`disputes in this proceeding and as to the ’079 patent. A true copy of the settlement
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`agreement is filed concurrently herewith. See Confidential Ex. 1024. Samsung and
`2
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`Proceeding No.: IPR2019-00510
`Attorney Docket: 39521-0060IP1
`Patent Owner request that the settlement agreement be treated as business
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`confidential information and be kept separate from the files of this proceeding in
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`accordance with 37 C.F.R. § 42.74(c). No other such agreements, written or oral,
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`exist between or among the Parties.
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`Third, termination would save significant further expenditure of resources by
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`the Parties. Termination upon settlement as requested would also further the
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`purpose of inter partes review proceedings to provide an efficient and less costly
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`alternative forum for patent disputes. Further, maintaining the proceeding as to
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`Samsung would discourage further settlements, as patent owners in similar
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`situations would have a strong disincentive to settle if they perceived that an inter
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`partes review would continue regardless of a settlement.
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`III. Conclusion
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`For the foregoing reasons, Samsung and Patent Owner respectfully request
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`termination of this inter partes review with respect to Samsung.
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`3
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`Proceeding No.: IPR2019-00510
`Attorney Docket: 39521-0060IP1
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`Respectfully submitted,
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`Dated: June 4, 2020
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`Dated: June 4, 2020
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Roberto J. Devoto, Reg. No. 55,108
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioners
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`Respectfully submitted,
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`/Brett Mangrum/
`Brett A. Mangrum, Reg. No. 64,783
`ETHERIDGE LAW GROUP
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, Texas 76092
`Telephone: (972) 292-8303
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`Attorneys for Patent Owner
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`4
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`Proceeding No.: IPR2019-00510
`Attorney Docket: 39521-0060IP1
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on June 5,
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`2020, a complete and entire copy of this Joint Motion to Terminate was provided
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`via email, to the Patent Owner by serving the email correspondence addresses of
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`record as follows:
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`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
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`ryan@etheridgelaw.com
` brett@etheridgelaw.com
` jim@etheridgelaw.com
` jeff@etheridgelaw.com
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`Email:
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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`5
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