Scramoge Technology Ltd.

Patent Trials and Appeals Board

Feb 8, 2022

IPR2022-00185 (P.T.A.B. Feb. 8, 2022)

Trials@uspto.gov Paper 9 571-272-7822 Entered: February 8, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. SCRAMOGE TECHNOLOGY LTD., Patent Owner ____________ IPR2022-00185 Patent 10,424,941 B2 ____________ Before JAMESON LEE, KARL D. EASTHOM, and WESLEY B. DERRICK, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2022-00185 Patent 10,424,941 B2 2 INTRODUCTION This proceeding involves U.S. Patent 10,424,941 B2 (“the ’941 patent”). The parties filed a Joint Motion to Terminate Proceeding (“Joint Motion to Terminate”) “[p]ursuant to the Patent and Trial Board’s email dated February 2, 2022.” Paper 7, 0.1 The Board’s email required the parties to file a true copy of their written settlement agreement as a confidential exhibit. The parties have filed a copy of their Covenant Not to Sue and Release Agreement (“Settlement Agreement”) as Exhibit 1012. Id. at 4. The parties also filed a “Joint Request To Treat Covenant Not To Sue Agreement as Business Confidential Information.” Paper 8 (“Joint Request to Keep Confidential” (citing 37 C.F.R. § 42.74(c))). The Joint Motion to Terminate explains Petitioner and Patent Owner entered into a Covenant Not to Sue and Release Agreement and “filed a joint stipulation and dismissal of the ’941 Patent with the Western District Court of Texas, stipulating to dismissal with prejudice of Patent Owner’s claims under the ’941 Patent.” Paper 7, 2. The Joint Motion to Terminate states that “[t]he Parties agree that neither party would be prejudiced by dismissal of this petition for IPR Review.” Id. at 1. The Joint Request to Keep Confidential states that the parties “jointly request that the Covenant Not to Sue Agreement submitted concurrently herewith be treated as business confidential information, and be kept separate from the files of the involved U.S. Patent No. 10,424,941 and the Inter Partes Review proceeding IPR2022-00185.” Paper 8, 1. 1 The page numbering begins at “0 (zero).” IPR2022-00185 Patent 10,424,941 B2 3 DISCUSSION Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding. Consolidated Trial Practice Guide, 86 (November 2019).2 This proceeding is at an early stage. Patent Owner has not yet filed a Preliminary Response and we have not issued a decision on whether to institute an inter partes review. Under these circumstances, we grant the Joint Motion to Terminate as to both Petitioner and Patent Owner. We also grant, in part only, the Joint Request to Keep Confidential, which is to treat the parties’ Settlement Agreement (Ex. 1012) as business confidential information according to the terms of 37 C.F.R. § 42.74(c). The portion requesting that the Settlement Agreement be kept separate from the files of “the Inter Partes Review proceeding IPR2022-00185” is denied, because no such requirement is contained in 37 C.F.R. § 42.74(c). ORDER It is ORDERED that the Joint Motion to Terminate is granted both as to Petitioner and to Patent Owner; FURTHER ORDERED that the Joint Request to Keep Confidential is granted-in-part and denied-in-part, as explained above, under the terms of 37 C.F.R. § 42.74(c); FURTHER ORDERED that the Settlement Agreement (Ex. 1012) shall be treated as business confidential information, shall be kept separate 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2022-00185 Patent 10,424,941 B2 4 from the file of Patent 10,424,941 B2, and shall be made available only in accordance with the provisions of 37 C.F.R. § 42.74(c); and FURTHER ORDERED that this proceeding is terminated both as to Petitioner and to Patent Owner, and that the Petition is dismissed. IPR2022-00185 Patent 10,424,941 B2 5 For PETITIONER: Jon Kappos Cameron W. Westin O’MELVENY & MYERS LLP jkappos@omm.com cwestin@omm.com For PATENT OWNER: Brett Cooper Reza Mirzaie RUSS, AUGUST & KABAT bcooper@raklaw.com rmirzaie@raklaw.com rak_scramoge@raklaw.com