IPR2020-01134 (P.T.A.B. Oct. 6, 2020)

Princeps Secundus LLC

Patent Trials and Appeals BoardOct 6, 2020

IPR2020-01134 (P.T.A.B. Oct. 6, 2020)

Trials@uspto.gov Paper 8 571.272.7822 Entered: October 6, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD., Petitioner, v. PRINCEPS SECUNDUS LLC, Patent Owner. ____________ IPR2020-01134 Patent 6,703,963 B2 ____________ Before JUSTIN T. ARBES, STACEY G. WHITE, and NABEEL U. KHAN, Administrative Patent Judges. WHITE, Administrative Patent Judge. DECISION Dismissal Prior to Institution of Trial 35 U.S.C. § 314 IPR2020-01134 Patent 6,703,963 B2 2 With the Board’s authorization, Samsung Electronics Co., Ltd. (“Petitioner”) and Princeps Secundus LLC (“Patent Owner”) (collectively “the Parties”) filed a Joint Motion to Dismiss Petition for Inter Partes Review. Paper 7 (“Motion” or “Mot.”). The parties represent that there is no settlement agreement or understanding between the parties made in connection with, or in contemplation of the dismissal of the petition for inter partes review, aside from the understanding to file the Motion. Mot. 1. According to the parties, termination “without adverse judgment and without a decision on institution . . . is appropriate as this inter partes review is in its pre-institution phase, and both parties are in agreement as to this outcome.” Mot. 1–2. Further, “Petitioner and Patent Owner certify that there is no settlement agreement or understanding between the parties made in connection with, or in contemplation of, the dismissal of the petition for inter partes review, aside from the understanding to file the present motion.” Id. at 1. The parties note that the Board has not issued a Decision on Institution. Id. at 2. Finally, the parties assert that “[e]fficiency and the interest of justice are best served by allowing” for the termination of this proceeding. Id. Based on the record before us, we dismiss the Petition in this proceeding. The instant proceeding is in the preliminary stage. Patent Owner did not file a preliminary response, and we have not yet considered the merits of the Petition. Petitioner and Patent Owner further certify that there is no agreement between the parties in this proceeding required to be filed under 37 C.F.R. § 42.74(b). Thus, dismissing the Petition pursuant to the parties’ joint request will lead to a “just, speedy, and inexpensive resolution” in this proceeding. 37 C.F.R. § 42.1(b). Under these circumstances, we determine that it is proper to dismiss the Petition and to IPR2020-01134 Patent 6,703,963 B2 3 terminate the proceeding. 37 C.F.R. § 42.5(a); 37 C.F.R. § 42.71(a). This Decision does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, for the reasons discussed above, it is: ORDERED that the Motion is granted, the Petition in IPR2020-01134 is dismissed, and the proceeding is terminated. PETITIONER: Naveen Modi Allan M. Soobert Elizabeth Brann Daniel Zeilberger PAUL HASTINGS LLP naveenmodi@paulhastings.com allansoobert@paulhastings.com elizabethbrann@paulhastings.com danielzeilberger@paulhastings.com PATENT OWNER: Patrick R. Delaney Timothy Devlin DEVLIN LAW FIRM LLC pdelaney@devlinlawfirm.com td-ptab@devlinlawfirm.com