Uniloc Luxembourg S.A.

Patent Trials and Appeals Board

Jul 21, 2020

IPR2017-01799 (P.T.A.B. Jul. 21, 2020)

Trials@uspto.gov Paper 47
Tel: 571-272-7822 Entered: July 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2017-01797 (Patent 8,724,622 B2);
IPR2017-01798 (Patent 8,724,622 B2);
IPR2017-01799 (Patent 8,199,747 B2);
IPR2017-01800 (Patent 8,243,723 B2);
IPR2017-01801 (Patent 8,995,433 B2);
IPR2017-01802 (Patent 7,535,890 B2)
____________

Per Curiam.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2017-01797 (Patent 8,724,622 B2);
IPR2017-01798 (Patent 8,724,622 B2);
IPR2017-01799 (Patent 8,199,747 B2);
IPR2017-01800 (Patent 8,243,723 B2);
IPR2017-01801 (Patent 8,995,433 B2);
IPR2017-01802 (Patent 7,535,890 B2)

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I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(“Parties”) filed Joint Motions to Terminate these proceedings due to
settlement. IPR2017-01797, Paper 37; IPR2017-01798, Paper 37; IPR2017-
01799, Paper 45; IPR2017-01800, Paper 40; IPR2017-01801, Paper 37;
IPR2017-01802, Paper 36. In support of these motions, the Parties filed a
copy of a confidential settlement agreement (IPR2017-01797, Ex. 2007;
IPR2017-01798, Ex. 2007; IPR2017-01799, Ex. 2010; IPR2017-01800, Ex.
2012; IPR2017-01801, Ex. 2006; IPR2017-01802, Ex. 2007 (“Settlement
Agreement”)), as well as joint requests to file the settlement agreement as
business confidential information pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c) (IPR2017-01797, Paper 38; IPR2017-01798, Paper 38;
IPR2017-01799, Paper 46; IPR2017-01800, Paper 41; IPR2017-01801,
Paper 38; IPR2017-01802, Paper 37). For simplicity, we refer below only to
the filings in IPR2017-01797, which are representative of the filings in all of
the proceedings.
II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
this chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.”
Section 35 U.S.C. § 317(a) also provides that if no petitioner remains in the
inter partes review, the Office may terminate the review. Section 317(b)
requires that any agreement between the parties, including collateral
IPR2017-01797 (Patent 8,724,622 B2);
IPR2017-01798 (Patent 8,724,622 B2);
IPR2017-01799 (Patent 8,199,747 B2);
IPR2017-01800 (Patent 8,243,723 B2);
IPR2017-01801 (Patent 8,995,433 B2);
IPR2017-01802 (Patent 7,535,890 B2)

3

agreements, made in connection with the termination of an inter partes
review “shall be in writing and a true copy of such agreement or
understanding shall be filed in the Office before the termination of the inter
partes review as between the parties.”
The Parties represent that they have reached an agreement to seek
termination of these inter partes review proceedings jointly. E.g., IPR2017-
01797 Joint Motion 2. “There are no other agreements, oral or written,
between the parties made in connection with, or in contemplation of, the
termination of this proceeding,” and the filed copy of the Settlement
Agreement is a true and correct copy. E.g., id. at 3–5. The Parties further
represent that the Settlement Agreement resolves all currently pending
Patent Office and District Court proceedings between the Parties involving
the patents at issue. E.g., id. at 4.
We instituted trials on the above-identified proceedings. Although we
decided the merits of the proceedings and entered final written decisions, the
Federal Circuit vacated those final written decisions. Uniloc 2017 LLC v.
Samsung Elecs. Am., Inc., Nos. 19-2165, -2166, -2167, -2168, -2169 (Fed.
Cir. Feb. 27, 2020) (order granting motion to vacate and remand).
Notwithstanding that the proceedings have moved beyond the preliminary
stages, the Parties have shown adequately that the termination of the
proceedings is appropriate. Under these circumstances, we determine that
good cause exists to terminate the proceedings. We further determine that
the Settlement Agreement complies with the requirements for written
agreements regarding termination set forth in 35 U.S.C. § 317(b).
IPR2017-01797 (Patent 8,724,622 B2);
IPR2017-01798 (Patent 8,724,622 B2);
IPR2017-01799 (Patent 8,199,747 B2);
IPR2017-01800 (Patent 8,243,723 B2);
IPR2017-01801 (Patent 8,995,433 B2);
IPR2017-01802 (Patent 7,535,890 B2)

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The Parties also filed Joint Requests that the Settlement Agreement be
treated as business confidential information and be kept separate from the
file of the respective patents involved in this inter partes proceeding. E.g.,
IPR2017-01797 Joint Request. 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 35 U.S.C. § 317(b) and 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, for each proceeding, the Joint Motion to Terminate
is granted, and IPR2017-01797, IPR2017-01798, IPR2017-01799, IPR2017-
01800, IPR2017-01801, and IPR2017-01802 are terminated pursuant to
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that, for each proceeding, 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 U.S. Patent Nos. 8,724,622 B2; 8,199,747 B2; 8,243,723 B2; 8,995,433
B2; and 7,535,890 B2, and made available only to Federal Government
agencies on written request, or to any person on a showing of good cause,
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
IPR2017-01797 (Patent 8,724,622 B2);
IPR2017-01798 (Patent 8,724,622 B2);
IPR2017-01799 (Patent 8,199,747 B2);
IPR2017-01800 (Patent 8,243,723 B2);
IPR2017-01801 (Patent 8,995,433 B2);
IPR2017-01802 (Patent 7,535,890 B2)

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For PETITIONER:

Naveen Modi
Joseph E. Palys
Phillip W. Citroen
Michael Wolfe
PAUL HASTINGS
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
phillipcitroen@paulhastings.com
michaelwolfe@paulhastings.com

For PATENT OWNER:

Brett Mangrum
Ryan Loveless
ETHERIDGE LAW GROUP
brett@etheridgelaw.com
ryan@etheridgelaw.com

Sean D. Burdick
UNILOC USA, INC.
sean.burdick@unilocusa.com