Greenthread LLC

Patent Trials and Appeals Board

Jul 10, 2020

IPR2020-00290 (P.T.A.B. Jul. 10, 2020)

Trials@uspto.gov Paper 12
571–272–7822 Date: July 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,

v.

GREENTHREAD LLC,
Patent Owner.
_______________

IPR2020-00290
Patent 9,190,502 B2
_______________

Before ROBERT J. WEINSCHENK, MINN CHUNG, and
RUSSELL E. CASS, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2020-00290
Patent 9,190,502 B2

2
I. INTRODUCTION
With Board authorization, Samsung Electronics Co., Ltd.
(“Petitioner”) and Greenthread LLC (“Patent Owner”) filed a Joint Motion
to Dismiss. Paper 10 (“Motion” or “Mot.”). In the Motion, the parties state
that they have settled their dispute regarding U.S. Patent No. 9,190,502 B2
(“the ’502 patent”), “by virtue of a series of agreements (‘Agreements’) to
which Patent Owner and Petitioner are parties and/or beneficiaries, and the
terms of which are confidential.” Mot. 1. The parties also filed what they
indicate are “true copies” of the written Agreements. Id.; Exs. 2018, 2019,
2020. Id.
In addition, the parties filed a Joint Motion to Seal (Paper 11, “Motion
to Seal”), requesting that Exhibits 2018, 2019, and 2020 be treated as
business confidential information and be kept separate from the files of
the ’502 patent. Motion to Seal 2; Mot. 1. In the Motion to Seal, the parties
also seek entry of the Default Protective Order provided in Appendix B of
the Trial Practice Guide and request that Exhibit 2018 be made available to
the Board and the filing party only. Motion to Seal 2. Although the Motion
to Seal is jointly filed, the parties state that they agree “Patent Owner is the
‘filing party’ for purposes of restricting access to Exhibit 2018.” Id. at 2 n.1.
The parties represent that “Petitioner is a party to Exhibits 2019 and 2020
but is not a party to Exhibit 2018” and that they “agree that Exhibit 2018
should be available only to the Board and the filing party.” Id. at 2–3.
II. ANALYSIS
This proceeding is in the preliminary stage, and no decision whether
to institute a trial has been made. The parties indicate that the Agreements
resolve all disputes between the parties regarding the ’502 patent. Mot. 1.
IPR2020-00290
Patent 9,190,502 B2

3
The parties also certify that there is no other “agreement or understanding
between the patent owner and a petitioner, including any collateral
agreements referred to in such agreement or understanding, made in
connection with, or in contemplation of, the termination” of this proceeding.
Id. at 2. Under these circumstances, we determine that it is appropriate to
dismiss the Petition (Paper 2) and terminate this proceeding. See 37 C.F.R.
§§ 42.71(a), 42.74(a).
After reviewing the written Agreements, we find the Agreements
contain business confidential information regarding the terms of the
settlement and good cause exists to treat the Agreements as business
confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Thus, to the extent the Joint Motion to Seal requests Exhibits 2018, 2019,
and 2020 be treated as business confidential information and be kept
separate from the files of the ’502 patent under 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c), the parties’ request is granted.
As for the parties’ request for entry of the Default Protective Order
and restricting access to Exhibit 2018 to the Board and Patent Owner only,
we note that both parties are allowed access to confidential information
under the Default Protective Order. See Default Protective Order § 2(A)
(Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated,
at 117). Thus, entry of the Default Protective Order would not restrict
access to Exhibit 2018 as requested by the parties.
Accordingly, the parties are instructed to contact the Board within
5 business days of entry of this Decision to schedule a conference call with
the Board to discuss options for filing or re-filing of any necessary motions
IPR2020-00290
Patent 9,190,502 B2

4
regarding treatment of Exhibit 2018. In the meantime, Exhibit 2018 will
remain designated Confidential/Restricted, as filed, until further notice from
this panel.
III. ORDER
It is hereby
ORDERED that the Joint Motion to Dismiss is granted;
FURTHER ORDERED that the parties’ joint request to treat the
Agreements (Exhibits 2018, 2019, and 2020) as business confidential
information and be kept separate from the files of the ’502 patent under the
provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted;
FURTHER ORDERED that the parties shall request a conference call
with the panel within 5 business days of entry of this Decision to discuss
options for filing or re-filing any necessary motions regarding treatment of
Exhibit 2018;
FURTHER ORDERED that Exhibit 2018 shall remain designated
Confidential/Restricted, as filed, until further notice from this panel; and
FURTHER ORDERED that the Petition is dismissed and this
proceeding is terminated as to all parties.
IPR2020-00290
Patent 9,190,502 B2

5
FOR PETITIONER:

Walter Renner
David Holt
FISH & RICHARDSON P.C.
Axf-ptab@fr.com
Holt2@fr.com

FOR PATENT OWNER:

Cyrus Morton
Rajin Olson
ROBINS KAPLAN LLP
cmorton@roinskaplan.com
rolson@robinskaplan.com