Trials@uspto.gov
`571.272.7822
`
`Paper 12
`Entered: September 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELLOY,
`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 ChiefAdministrative Patent Judge,
`LYNNE H. BROWNE, HYUN J. JUNG, AMANDAF. WIEKER,and
`RICHARD H. MARSCHALL,Administrative Patent Judges.!
`
`PER CURIAM
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`' This is not a Decision from an expanded panel of the Board. Rather, we
`exercise our discretion to issue one Decision forall 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 12
`Entered: September 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELLOY,
`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 ChiefAdministrative Patent Judge,
`LYNNE H. BROWNE, HYUN J. JUNG, AMANDAF. WIEKER,and
`RICHARD H. MARSCHALL,Administrative Patent Judges.!
`
`PER CURIAM
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`' This is not a Decision from an expanded panel of the Board. Rather, we
`exercise our discretion to issue one Decision forall 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”).’
`
`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. 1023.7 The Partiesalso filed a Joint
`
`Statement Clarifying the Joint Motion to Terminate in each of the above-
`
`captioned proceedings. Paper 11 (“Joint Statement’).
`
`Il. DISCUSSION
`
`In each Joint Motion,the Parties state that they “have reached a
`
`settlement agreement andjointly 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):
`
`* For purposes of expediency, werefer to the Papersfiled 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)
`
`ode
`
`
`
`GREE,Inc.v.
`US
`Title
`Supercell Oy,
`Patent
`AIA Case, Exhibit No.
`Case No.
`
`Stipulation|7")veh| 10,286,318] 1PR2020-00893, Ex. 1038
`
`ofDismissal 10,279,262|TPR2020-00993, Ex. 1035ED Tex
`
`
`
`
`
`Stipulation
`
`
`10,307,678|PGR2020-00042, Ex. 1017
`2:19-cv-00200-
`of Partial
`
`
`
`
`10,335,682|PGR2020-00052, Ex. 1023
`Dismissal of
`JRG-RSP
`
`
`10,398,978|PGR2020-00067, Ex. 1020
`
`(E.D. Tex)
`Counts V,
`
`
`
`VII, and IX
`
`
`
`
`
`
`
`
`
`In each stipulated dismissal, the Parties state that in consideration of
`GREE’s agreementto dismiss the action(or certain patents thereof) with
`prejudice, Supercell agrees to request termination of its PTAB proceeding(s)
`challenging the relevantpatent(s) and agreesnotto 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 Statement1.
`
`The Parties argue that “[t]ermination of each proceeding is proper”
`
`because:
`
`Theparties have executed stipulated dismissals regarding the
`Patents at Issue, a respective true copy of whichis filed
`herewith. The Board has not yet reachedinstitution decisions
`
`
`
`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 ... .* No motions are outstanding in
`these proceedings and no other party’s rights will be prejudiced
`by the terminations of these proceedings.
`
`Joint Motion2.
`
`Thereare 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 proceedingsisin its
`preliminary stage, and we have not yet decided whetherto institutea trial.
`In view ofthe early stage in these proceedings and the settlement agreement
`
`between the Parties, we determine that good cause exists andthatit is
`
`appropriate to dismiss the petition and terminate each of these proceedings
`as to the Parties, without rendering a decision oninstitution 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).
`
`Accordingly,it is:
`
`II. ORDER
`
`ORDEREDthat the Joint Motions to Terminate are granted; and
`
`FURTHER ORDEREDthatthe preliminary proceedingsin
`IPR2020-00893, IPR2020-00993, PGR2020-00042, PGR2020-00052, and
`PGR2020-00067are terminated andtheirpetitions 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 decisionwill
`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
`
`
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