IPR2020-01173 (P.T.A.B. Jan. 19, 2021)

Ultravision Technologies, LLC

Patent Trials and Appeals BoardJan 19, 2021

IPR2020-01173 (P.T.A.B. Jan. 19, 2021)

Trials@uspto.gov Paper No. 10 571-272-7822 Entered: January 19, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD., Petitioner, v. ULTRAVISION TECHNOLOGIES, LLC, Patent Owner. ____________ Case IPR2020-01173 Patent 9,978,294 B1 ____________ Before DENISE M. POTHIER, SCOTT DANIELS, and ROBERT L. KINDER, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-01173 Patent 9,978,294 B1 2 BACKGROUND On December 15, 2020, the parties filed the following documents: (1) a Joint Motion to Terminate Proceeding Pursuant to 37 C.F.R. § 42.71 and 35 U.S.C. § 317 (Paper 8, “Joint Motion to Terminate”) and (2) a true copy of the parties’ settlement agreement (Paper 9). For the following reasons, we grant the Joint Motion to Terminate. The proceeding is still in its preliminary stage. Petitioner, Samsung Electronics Co., Ltd.1, filed a Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1, 2, 7, 9, 13, 18, 20, 22–24, 26–28, and 30 (the “challenged claims”) of U.S. Patent No. 9,978,294 B1 (Ex. 1001, “the ’294 patent”). Pet. 1. Patent Owner, Ultravision Technologies, LLC, filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have not entered a decision whether to institute an inter partes review. The Joint Motion to Terminate requests terminating this inter partes proceeding. Paper 8, 1. The parties represent that: (1) they have settled their dispute, (2) they have filed a joint motion to dismiss the suit, Ultravision Technologies, LLC v. Samsung Electronics Co., Ltd, Case No. 2:19-cv- 00252-JRG-RSP (E.D. Tex.), as to all claims of the ’294 patent, (3) the suit has been dismissed, and (4) they agreed to terminate this inter partes review. Paper 8, 2. The Joint Motion to Terminate further requests treating the settlement agreement as business confidential, keeping the agreement separate from the underlying patent files, and making the agreement “available only as 1 Petitioner, Samsung Electronics Co., Ltd., identifies itself, Samsung Display Co., Ltd., and Samsung Electronics America, Inc. as real parties-in- interest. Paper 2, 1. IPR2020-01173 Patent 9,978,294 B1 3 provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).” Paper 8, 1; see also Paper 8, 2. The parties state they have filed a true copy of the confidential settlement agreement as required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 8, 1. The parties also certify that “[t]here are no collateral agreements.” Paper 8, 1. Based on the foregoing, we understand the filed agreement settles all disputes between the parties with respect to this proceeding. Under these circumstances, we determine that good cause exists to grant the motion to terminate. ORDER It is ORDERED that the Joint Motion to Terminate is granted; and FURTHER ORDERED that that the settlement agreement included in Paper 9 shall be treated as business confidential information and be kept separate from the patent file; and FURTHER ORDERED that this proceeding is terminated. IPR2020-01173 Patent 9,978,294 B1 4 FOR PETITIONER: Scott A. McKeown Alexander E. Middleton Keyna Chow ROPES & GRAY LLP scott.mckeown@ropesgray.com alexander.middleton@ropesgray.com keyna.chow@ropesgray.com FOR PATENT OWNER: Peter Lambrianakos Vincent J. Rubino Joseph M. Mercadante Enrique W. Iturralde FABRICANT LLP plambrianakos@fabricantllp.com vrubino@fabricantllp.com jmercadante@fabricantllp.com eiturralde@fabricantllp.com