IPR2017-00353 (P.T.A.B. Sep. 9, 2020)

Image Processing Technologies LLC

Patent Trials and Appeals BoardSep 9, 2020

IPR2017-00353 (P.T.A.B. Sep. 9, 2020)

Trials@uspto.gov Paper 45 Tel: 571-272-7822 Entered: September 9, 2020 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. IMAGE PROCESSING TECHNOLOGIES LLC, Patent Owner. ____________ IPR2017-00353 (Patent 8,983,134 B2); IPR2017-01218 (Patent 8,983,134 B2) Per Curiam. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2017-00353 (Patent 8,983,134 B2); IPR2017-01218 (Patent 8,983,134 B2) I. INTRODUCTION With the Board’s authorization, Petitioner and Patent Owner (“Parties”) filed Joint Motions to Terminate these proceedings due to settlement. IPR2017-00353, Paper 43; IPR2017-01218, Paper 49. In support of these motions, the Parties filed a copy of a confidential settlement agreement (IPR2017-00353, Ex. 1013; IPR2017-01218, Ex. 1024 (“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) (IPR2017-00353, Paper 44; IPR2017- 01218, Paper 50). For simplicity, we refer below only to the filings in IPR2017-00353, which are representative of the filings in both 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 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., -00353 Joint Motion 2. Further, “there are no collateral agreement[s] or IPR2017-00353 (Patent 8,983,134 B2); IPR2017-01218 (Patent 8,983,134 B2) understandings 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. 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 3–4. 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. Image Processing Techs. LLC v. Samsung Elecs. Co., et al., Nos. 18-2156, 19-1408, 19-1485 (Fed. Cir. Dec. 5, 2019) (order vacating and remanding). 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). 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., -00353 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). IPR2017-00353 (Patent 8,983,134 B2); IPR2017-01218 (Patent 8,983,134 B2) 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 IPR2017-00353 and IPR2017-01218 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 file of U.S. Patent No. 8,983,134 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). IPR2017-00353 (Patent 8,983,134 B2); IPR2017-01218 (Patent 8,983,134 B2) For PETITIONER: Marc Pensabene John Kappos Nicholas Whilt Brian Cook Clarence Rowland O’MELVENY & MYERS LLP mpensabene@omm.com jkappos@omm.com nwhilt@omm.com bcook@omm.com crowland@omm.com For PATENT OWNER: Chris Coulson Michael Zachary Lauren Robinson Craig Allison BUNSOW DE MORY LLP ccoulson@bdiplaw.com mzachary@bdiplaw.com lrobinson@bdiplaw.com callison@bdiplaw.com