Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 9
`Entered: September 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE, INC.,
`Patent Owner.
`____________
`
`
`
`IPR2020-00893 (Patent 10,279,262 B2)
`IPR2020-00993 (Patent 10,286,318 B2)
`PGR2020-00042 (Patent 10,307,678 B2)
`PGR2020-00052 (Patent 10,335,682 B2)
`PGR2020-00067 (Patent 10,398,978 B2)
`____________
`
`
`Before MICHAEL W. KIM, Vice Chief Administrative Patent Judge,
`LYNNE H. BROWNE, HYUN J. JUNG, AMANDA F. WIEKER, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.1
`
`PER CURIAM
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`1 This is not a Decision from an expanded panel of the Board. Rather, we
`exercise our discretion to issue one Decision for all of the above-listed
`proceedings. The proceedings have not been consolidated, and the parties
`are not authorized to use this caption format.
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 9
`Entered: September 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE, INC.,
`Patent Owner.
`____________
`
`
`
`IPR2020-00893 (Patent 10,279,262 B2)
`IPR2020-00993 (Patent 10,286,318 B2)
`PGR2020-00042 (Patent 10,307,678 B2)
`PGR2020-00052 (Patent 10,335,682 B2)
`PGR2020-00067 (Patent 10,398,978 B2)
`____________
`
`
`Before MICHAEL W. KIM, Vice Chief Administrative Patent Judge,
`LYNNE H. BROWNE, HYUN J. JUNG, AMANDA F. WIEKER, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.1
`
`PER CURIAM
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`1 This is not a Decision from an expanded panel of the Board. Rather, we
`exercise our discretion to issue one Decision for all of the above-listed
`proceedings. The proceedings have not been consolidated, and the parties
`are not authorized to use this caption format.
`
`
`
`
`
`IPR2020-00893 (Patent 10,279,262 B2)
`IPR2020-00993 (Patent 10,286,318 B2)
`PGR2020-00042 (Patent 10,307,678 B2)
`PGR2020-00052 (Patent 10,335,682 B2)
`PGR2020-00067 (Patent 10,398,978 B2)
`
`
`I.
`INTRODUCTION
`In each of the above-captioned proceedings, Supercell Oy
`(“Petitioner”) and GREE, Inc. (“Patent Owner”) (collectively “the Parties”)
`filed a Joint Motion to Terminate. Paper 10 (“Joint Motion”).2
`Accompanying each Joint Motion, the Parties filed a copy of a stipulated
`dismissal from the parallel district court proceeding involving the Parties.
`See, e.g., PGR2020-00052, Ex. 1023.3 The Parties also filed a Joint
`Statement Clarifying the Joint Motion to Terminate in each of the above-
`captioned proceedings. Paper 11 (“Joint Statement”).
`II. DISCUSSION
`In each Joint Motion, the Parties state that they “have reached a
`settlement agreement and jointly seek termination” of the above-captioned
`proceedings. Joint Motion 1. In each Joint Statement, the Parties clarify
`that they “do not have a ‘written settlement agreement,’” but that they “have
`only a stipulated dismissal of the Parties’ claims and defenses with respect to
`[the patent] challenged in the [instant Patent Trial and Appeal Board
`(“PTAB”) proceeding], in the parallel district court proceeding regarding the
`same.” Joint Statement 1. The following table identifies the stipulated
`dismissals relied upon by the Parties, along with the corresponding patent(s)
`and PTAB proceeding(s):
`
`
`2 For purposes of expediency, we refer to the Papers filed in
`PGR2020-00052. The parties filed similar papers in each of the other
`proceedings captioned above.
`3 See also IPR2020-00893, Ex. 1038; IPR2020-00993, Ex. 1035;
`PGR2020-00042, Ex. 1017; PGR2020-00067, Ex. 1020.
`
`2
`
`
`
`IPR2020-00893 (Patent 10,279,262 B2)
`IPR2020-00993 (Patent 10,286,318 B2)
`PGR2020-00042 (Patent 10,307,678 B2)
`PGR2020-00052 (Patent 10,335,682 B2)
`PGR2020-00067 (Patent 10,398,978 B2)
`
`
`
`Title
`
`GREE, Inc. v.
`Supercell Oy,
`Case No.
`2:19-cv-00161-
`JRG-RSP
`(E.D. Tex.)
`
`PGR2020-00042, Ex. 1017
`PGR2020-00052, Ex. 1023
`PGR2020-00067, Ex. 1020
`
`Stipulation
`of Dismissal
`Stipulation
`of Partial
`Dismissal of
`Counts V,
`VIII, and IX
`
`In each stipulated dismissal, the Parties state that in consideration of
`GREE’s agreement to dismiss the action (or certain patents thereof) with
`prejudice, Supercell agrees to request termination of its PTAB proceeding(s)
`challenging the relevant patent(s) and agrees not to participate in the PTAB
`proceeding(s) if instituted by the Patent Trial and Appeal Board. See, e.g.,
`Ex. 1023, 1. The Parties state further that, aside from the stipulated
`dismissals, “there is no other written agreement or understanding between
`the Parties made in connection with, or in contemplation of, the termination
`of” the above-captioned proceedings. Joint Statement 1.
`The Parties argue that “[t]ermination of each proceeding is proper”
`because:
`The parties have executed stipulated dismissals regarding the
`Patents at Issue, a respective true copy of which is filed
`herewith. The Board has not yet reached institution decisions
`
`U.S.
`Patent
`10,286,318
`10,279,262
`
`AIA Case, Exhibit No.
`
`IPR2020-00893, Ex. 1038
`IPR2020-00993, Ex. 1035
`
`2:19-cv-00200-
`JRG-RSP
`(E.D. Tex)
`
`10,307,678
`10,335,682
`10,398,978
`
`3
`
`
`
`IPR2020-00893 (Patent 10,279,262 B2)
`IPR2020-00993 (Patent 10,286,318 B2)
`PGR2020-00042 (Patent 10,307,678 B2)
`PGR2020-00052 (Patent 10,335,682 B2)
`PGR2020-00067 (Patent 10,398,978 B2)
`
`
`regarding the proceedings . . . .4 No motions are outstanding in
`these proceedings and no other party’s rights will be prejudiced
`by the terminations of these proceedings.
`Joint Motion 2.
`There are strong public policy reasons to favor settlement between the
`parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg.
`64,280 (Nov. 21, 2019). Each of the above-captioned proceedings is in its
`preliminary stage, and we have not yet decided whether to institute a trial.
`In view of the early stage in these proceedings and the settlement agreement
`between the Parties, we determine that good cause exists and that it is
`appropriate to dismiss the petition and terminate each of these proceedings
`as to the Parties, without rendering a decision on institution or a final written
`decision. See 37 C.F.R. § 42.74.
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motions to Terminate are granted; and
`FURTHER ORDERED that the preliminary proceedings in
`IPR2020-00893, IPR2020-00993, PGR2020-00042, PGR2020-00052, and
`PGR2020-00067 are terminated and their petitions are dismissed.
`
`
`
`4 Institution was denied in IPR2020-00310. The Parties’ Joint Motion with
`respect to that proceeding is not addressed in this Decision. A decision will
`be issued in that proceeding separately.
`
`4
`
`
`
`IPR2020-00893 (Patent 10,279,262 B2)
`IPR2020-00993 (Patent 10,286,318 B2)
`PGR2020-00042 (Patent 10,307,678 B2)
`PGR2020-00052 (Patent 10,335,682 B2)
`PGR2020-00067 (Patent 10,398,978 B2)
`
`For PETITIONER:
`
`Brian M. Hoffman
`Michael J. Sacksteder
`Kevin X. McGann
`Jennifer R. Bush
`Geoffrey Miller
`Dargaye H. Churnet
`Scott D. Baker
`FENWICK & WEST LLP
`bhoffman@fenwick.com
`msacksteder@fenwick.com
`kmcgann@fenwick.com
`jbush@fenwick.com
`gmiller@fenwick.com
`dchurnet@fenwick.com
`sbaker@fenwick.com
`
`
`
`For PATENT OWNER:
`
`John C. Alemanni
`Andrew Rinehart
`Joshua H. Lee
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`jlee@kilpatricktownsend.com
`
`
`Scott A. McKeown
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`
`5
`
`
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