SpaceTime3D, Inc

Patent Trials and Appeals Board

Mar 15, 2021

IPR2020-01417 (P.T.A.B. Mar. 15, 2021)

Trials@uspto.gov Paper 22
571-272-7822 Entered: March 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS CO., LTD., and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,
v.
SPACETIME3D, INC.,
Patent Owner.

IPR2020-01417
Patent 8,881,048 B2

Before BRIAN J. McNAMARA, JENNIFER MEYER CHAGNON, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2020-01417
Patent 8,881,048 B2
2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively “the Parties”) filed a Joint Motion to Dismiss the Petition in the
above-identified proceeding. Paper 20 (“Joint Motion”). In support of the
Joint Motion, the Parties filed a copy of a Confidential Settlement and
License Agreement (Ex. 1036 (“Settlement Agreement”)), as well as a Joint
Request to Treat the Settlement Agreement as Business Confidential
Information pursuant to and 37 C.F.R. § 42.74(c) (Paper 21 (“Joint
Request”)).
II. DISCUSSION
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceeding, and that the filed copy of the Settlement Agreement is a
true and complete copy and that “[t]here are no other agreements, oral or
written, between the parties that were made in connection with, or in
contemplation of, the requested dismissal.” Joint Motion, 1. The Parties
further represent that “[t]he parties have settled all disputes relating to the
’048 patent” and that “[t]he lawsuit between Petitioners and Patent Owner
involving the ’048 patent is in the process of being dismissed concurrently
with this inter partes review.” Id. at 2.
This proceeding is at an early stage, and we have not yet decided
whether to institute a trial in the proceeding. In view of the early stage of
the proceeding and the settlement between the Parties, we determine that
good cause exists to dismiss the petition and terminate the proceeding with
respect to the Parties.
The Parties also filed a Joint Request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
IPR2020-01417
Patent 8,881,048 B2
3
file of the patent involved in this inter partes proceeding. Paper 21. After
reviewing the Settlement Agreement between Petitioner and Patent Owner,
we find that the Settlement Agreement contains confidential business
information regarding the terms of settlement. We determine that good
cause exists to treat the Settlement Agreement between Petitioner and Patent
Owner as business confidential information pursuant to 37 C.F.R.
§ 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion to Dismiss is granted, and the
petition in IPR2020-01417 is dismissed and the proceeding is terminated;
and
FURTHER ORDERED that the Joint Request to Treat the Settlement
Agreement as Business Confidential Information is granted, and the
Settlement Agreement shall be kept separate from the files of Patent
8,881,048 B2 and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, pursuant to
37 C.F.R. § 42.74(c).
IPR2020-01417
Patent 8,881,048 B2
4
For PETITIONER:
Robert Buergi
Brent Yamashita
Jonathan Hicks
DLA PIPER LLP
robert.buergi@dlapiper.com
brent.yamashita@dlapiper.com
jonathan.hicks@dlapiper.com

For PATENT OWNER:
Todd E. Fitzsimmons
FITZSIMMONS IP LAW, P.C.
todd@fitziplaw.com

Gregory Cordrey
JEFFER MANGELS BUTLER & MITCHELL LLP
gcordrey@jmbm.com