IPR2020-01353 (P.T.A.B. Jan. 28, 2021)

Hall, William Y.

Patent Trials and Appeals BoardJan 28, 2021

IPR2020-01353 (P.T.A.B. Jan. 28, 2021)

Trials@uspto.gov Paper 7 Tel: 571-272-7822 Entered: January 28, 2021 1 UNITED STATES PATENT AND TRADEMARK OFFICE ________________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________________ SAMSUNG ELECTRONICS CO., LTD., Petitioner, v. ULTRAVISION TECHNOLOGIES, LLC, Patent Owner. ________________________ IPR2020-01353 Patent 9,642,272 B1 ________________________ Before HUBERT C. LORIN, BRIAN J. McNAMARA, and SCOTT A. DANIELS, Administrative Patent Judges. McNAMARA, Administrative Patent Judge. TERMINATION ORDER Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-01353 Patent 9,642,272 B1 On December 15, 2020, the parties filed a “Joint Motion to Terminate Proceeding Pursuant to 37 C.F.R. § 42.71 and 35 U.S.C. § 317.” Paper 5 (“Mot.”). The parties also filed a copy of their written settlement agreement as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 6. This proceeding is still in its preliminary stages. Petitioner, Samsung Electronics Co., Ltd., filed a Petition requesting an inter partes review of claims 1, 4-8, 10, and 13-17 of U.S. Patent No. 9,642,272 B1. Paper 2. Patent Owner, Ultravision Technologies, LLC, did not file a Preliminary Response. We have not entered a decision whether or not to institute an inter partes review. In the Joint Motion to Terminate Proceeding, the parties indicate that they have settled their dispute regarding the ’272 patent. Mot. 1–2. The parties represent that they “have filed a joint motion to dismiss the suit as to all claims of U.S. Patent No. 9,642,272 (Ultravision Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:19-cv-00252-JRG-RSP (E.D. Tex.)) and that the suit has now been dismissed. Id. at 2. The parties indicate that the filed settlement agreement (Paper 6) is “a true copy of the confidential settlement” (Mot. at 1). The parties also certify that “[t]here are no collateral agreements.” Id. The parties “request that the Board grant the parties’ Joint Motion to Terminate Case Number IPR2020-01353 in its entirety.” Id. at 2. The parties also request that the filed settlement agreement “be treated as business confidential information, be kept separate from the underlying patent files, and be made available only as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).” Id. at 1. IPR2020-01353 Patent 9,642,272 B1 Based on the foregoing, we understand the filed agreement settles all disputes between the parties with respect to this proceeding. Under these circumstances, we determine that good cause exists to grant the motion to terminate. ORDER It is ORDERED that the Joint Motion to Terminate is granted; and FURTHER ORDERED that the parties’ joint request that the settlement agreement (Paper 6) be treated as business confidential information, be kept separate from the underlying patent files, and be made available only as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted; and FURTHER ORDERED that this proceeding is terminated. IPR2020-01353 Patent 9,642,272 B1 PETITIONER: Scott McKeown Scott.mckeown@ropesgray.com Alexander Middleton Alexander.middleton@ropesgray.com Keyna Chow Keyna.chow@ropesgray.com PATENT OWNER: Peter Lambrianakos plambrianakos@fabricantllp.com Vincent J. Rubino, III vrubino@fabricantllp.com Joseph M. Mercadante jmercadante@fabricantllp.com Enrique W. Iturralde eiturralde@fabricantllp.com