Gree, Inc.

Patent Trials and Appeals Board

Sep 15, 2020

PGR2020-00052 (P.T.A.B. Sep. 15, 2020)

Trials@uspto.gov Paper 12
571.272.7822 Entered: September 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SUPERCELL OY,
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 Chief Administrative Patent Judge,
LYNNE H. BROWNE, HYUN J. JUNG, AMANDA F. WIEKER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.1

PER CURIAM

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 This is not a Decision from an expanded panel of the Board. Rather, we
exercise our discretion to issue one Decision for all 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)

2
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”).2
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. 1023.3 The Parties also filed a Joint
Statement Clarifying the Joint Motion to Terminate in each of the above-
captioned proceedings. Paper 11 (“Joint Statement”).
II. DISCUSSION
In each Joint Motion, the Parties state that they “have reached a
settlement agreement and jointly 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):

2 For purposes of expediency, we refer to the Papers filed 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.
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)

3

Title
GREE, Inc. v.
Supercell Oy,
Case No.
U.S.
Patent AIA Case, Exhibit No.
Stipulation
of Dismissal
2:19-cv-00161-
JRG-RSP
(E.D. Tex.)
10,286,318
10,279,262
IPR2020-00893, Ex. 1038
IPR2020-00993, Ex. 1035
Stipulation
of Partial
Dismissal of
Counts V,
VIII, and IX
2:19-cv-00200-
JRG-RSP
(E.D. Tex)
10,307,678
10,335,682
10,398,978
PGR2020-00042, Ex. 1017
PGR2020-00052, Ex. 1023
PGR2020-00067, Ex. 1020

In each stipulated dismissal, the Parties state that in consideration of
GREE’s agreement to dismiss the action (or certain patents thereof) with
prejudice, Supercell agrees to request termination of its PTAB proceeding(s)
challenging the relevant patent(s) and agrees not to 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 Statement 1.
The Parties argue that “[t]ermination of each proceeding is proper”
because:
The parties have executed stipulated dismissals regarding the
Patents at Issue, a respective true copy of which is filed
herewith. The Board has not yet reached institution 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)

4
regarding the proceedings . . . .4 No motions are outstanding in
these proceedings and no other party’s rights will be prejudiced
by the terminations of these proceedings.
Joint Motion 2.
There are 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 proceedings is in its
preliminary stage, and we have not yet decided whether to institute a trial.
In view of the early stage in these proceedings and the settlement agreement
between the Parties, we determine that good cause exists and that it is
appropriate to dismiss the petition and terminate each of these proceedings
as to the Parties, without rendering a decision on institution 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).
III. ORDER
Accordingly, it is:
ORDERED that the Joint Motions to Terminate are granted; and
FURTHER ORDERED that the preliminary proceedings in
IPR2020-00893, IPR2020-00993, PGR2020-00042, PGR2020-00052, and
PGR2020-00067 are terminated and their petitions 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 decision will
be issued in that proceeding separately.
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)

5
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