Snik LLC

Patent Trials and Appeals Board

May 7, 2021

IPR2020-01429 (P.T.A.B. May. 7, 2021)

Trials@uspto.gov Paper No. 14
571-272-7822 Entered: May 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,
v.
SNIK LLC,
Patent Owner.

IPR2020-01427; IPR2020-01428; IPR2020-01429
Patent 9,769,556 B21

Before KIMBERLY McGRAW, GARTH D. BAER, and
STACY B. MARGOLIES, Administrative Patent Judges.
McGRAW, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
37 C.F.R. § 317; § 42.74

1 We exercise our discretion to issue one order for all of the above captioned
proceedings. The proceedings have not been consolidated, and the parties
are not authorized to use this caption format.
IPR2020-01427; IPR2020-01428; IPR2020-01429
Patent 9,769,556 B2

2

I. INTRODUCTION
With the Board’s authorization, Samsung Electronics America, Inc.
(“Petitioner”) and Snik LLC (“Patent Owner”) (collectively, “the Parties”)
filed in each of the above-identified proceedings a Joint Motion to Terminate
Proceeding Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72 (“Motion
to Terminate”). Paper 12.2 In support of each Motion to Terminate, the
Parties filed in each proceeding a corresponding Confidential Settlement and
License Agreement, Ex. 2012 (“Settlement Agreements”),3 as well as a
corresponding Joint Motion to Treat Settlement Agreement as Business
Confidential and Keep Separate Pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c), Paper 13 (“Joint Motion”).
II. DISCUSSION
In each Motion to Terminate, the Parties represent that Petitioner,
through its parent company Samsung Electronics Co., Ltd., and Patent
Owner have fully executed a settlement agreement in writing that resolves
all underlying disputes between them, including and jointly seek termination
of the above-identified inter partes review proceedings. Motion to
Terminate 2, 4. The Parties further represent that the Settlement Agreement
resolves all currently pending Patent Office and District Court proceedings
between the Parties involving Patent 9,769,556 B2. Id. at 4. The parties
also represent that, aside from the Settlement Agreement, there are no

2 For purposes of expediency, we cite to Papers filed in IPR2020-01427,
unless otherwise noted. The Parties filed similar motions to terminate in
IPR2020-01428 and IPR2020-01429.
3 For purposes of expediency, we cite to the Exhibits filed in IPR2020-
01427. The Settlement Agreement was filed in IPR2020-01428 and
IPR2020-01429 as Exhibit 2019.
IPR2020-01427; IPR2020-01428; IPR2020-01429
Patent 9,769,556 B2

3

collateral agreements or understandings made in connection with, or in
contemplation of, the termination of this proceeding. Id. at 2. Accordingly,
the Parties jointly request termination of these proceedings. Id. at 4.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)4;
see 35 U.S.C. §317(a); 37 C.F.R. § 42.72. Here, although the Board has
instituted inter partes review of the challenged patent on March 9, 2021
(Paper 10), the Board has not decided the merits of these proceedings.
Under these circumstances, therefore, we determine that it is appropriate to
terminate these proceedings as to the Parties, without rendering a final
written decision.
In each Joint Motion, the Parties request that the Settlement
Agreements be treated as business confidential information and be kept
separate from the files of the patent involved in these inter partes
proceedings. Joint Motion 1. After reviewing the Settlement Agreement,
we find that the Settlement Agreements contain confidential business
information regarding the terms of settlement. We determine that good
cause exists to treat the Settlement Agreement as business confidential
information pursuant to 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).

4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-01427; IPR2020-01428; IPR2020-01429
Patent 9,769,556 B2

4

III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Motion to Terminate in each proceeding is
granted, and the above-identified proceedings are terminated; and
FURTHER ORDERED that the Joint Motion to treat the Settlement
Agreements as Business Confidential in each proceeding is granted, and the
Settlement Agreement shall be kept separate from the file of Patent
9,769,556 B2, and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, pursuant to 37
C.F.R. § 42.74(c).

IPR2020-01427; IPR2020-01428; IPR2020-01429
Patent 9,769,556 B2

5

PETITIONER:
Ali Sharifahmadian
Mark Patrick
Jin-Suk Park
ali.sharifahmadian@arnoldporter.com
mark.patrick@arnoldporter.com
jin.park@arnoldporter.com

PATENT OWNER:
John Kyle
jkyle@klhipbiz.com