Dareltech, LLC

Patent Trials and Appeals Board

Sep 28, 2020

IPR2019-01528 (P.T.A.B. Sep. 28, 2020)

Trials@uspto.gov Paper 14
571-272-7822 Entered: September 28, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD. and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioners,

v.

DARELTECH, LLC,
Patent Owner.
_____________

IPR2019-01528 (Patent 8,717,328 B1)
IPR2019-01529 (Patent 8,593,427 B1)
____________

Before BRIAN J. McNAMARA, KEVIN C. TROCK, and
STACY B. MARGOLIES, Administrative Patent Judges.

TROCK, Administrative Patent Judge.

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

IPR2019-01528 (Patent 8,717,328 B1)
IPR2019-01529 (Patent 8,593,427 B1)
2

Pursuant to our authorization, on September 21, 2020, the parties filed
Joint Motions to Terminate the above-captioned proceedings. Paper 13.
Along with the motions, the parties filed a settlement agreement (Exhibit
2001). The parties also filed Joint Motions to File Agreement as Business
Confidential Information (Paper 12), in which the parties request that the
settlement agreement be treated as business confidential information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and that the
agreement be kept separate from the public files of the challenged patent.
The parties state that they have settled their dispute regarding the
challenged patents, that the settlement agreement has been made in writing,
that a true and correct copy of the agreement is filed as Exhibit 2001, and
that there are no other agreements, oral or written, between the parties made
in connection with the termination of this proceeding. Paper 13, 2, 3. The
parties further state that the agreement contemplates requesting termination
of these proceedings and dismissing the related district proceeding regarding
the challenged patents. Id. at 2. The parties further state that a joint
stipulation of dismissal was submitted in the related district court
proceeding. Id. (citing Dareltech, LLC v. Samsung Elecs. Co, Case No.
4:18-cv-00702 (E.D. Tex), Dkt. 73).
We instituted trial on March 16, 2020. Paper 7. These proceedings
are in their early stages and we have not yet decided the merits. Under the
circumstances, we determine it is appropriate to terminate these proceedings.
See 35 U.S.C. § 317(a). We further determine that, because the settlement
agreement contains confidential business information regarding the terms of
settlement, it is appropriate to treat the agreement as business confidential
information.
IPR2019-01528 (Patent 8,717,328 B1)
IPR2019-01529 (Patent 8,593,427 B1)
3

Accordingly, it is
ORDERED that the Joint Motions to Terminate these proceedings are
GRANTED and proceedings IPR2019-01528 and IPR2019-01529 are
hereby terminated; and
FURTHER ORDERED that the Joint Motions to File Agreement as
Business Confidential Information are GRANTED, and the settlement
agreement (Exhibit 2001) shall be kept separate from the files of U.S. Patent
Nos. 8,717,328 B1 and 8,593,427 B1, 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).

IPR2019-01528 (Patent 8,717,328 B1)
IPR2019-01529 (Patent 8,593,427 B1)
4

FOR PETITIONER:
Jeffrey A. Miller
Jennifer A. Sklenar
ARNOLD & PORTER KAYE SCHOLER LLP
jmillerptab@apks.com
jennifer.sklenar@apks.com

FOR PATENT OWNER:
David L. Hecht
PIERCE BAINBRIDGE BECK PRICE & HECHT LLP
dhecht@piercebainbridge.com