IPR2020-00340 (P.T.A.B. Jul. 8, 2020)

Uniloc 2017 LLC

Patent Trials and Appeals BoardJul 8, 2020

IPR2020-00340 (P.T.A.B. Jul. 8, 2020)

Trials@uspto.gov Tel: 571-272-7822 Paper 11 Date: July 8, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MICROSOFT CORPORATION and SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. UNILOC 2017 LLC, Patent Owner. ____________ IPR2019-011881 Patent 6,664,891 B2 ____________ SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. UNILOC 2017 LLC, Patent Owner. ____________ IPR2020-00340 Patent 6,664,891 B2 ____________ Before MINN CHUNG, CHARLES J. BOUDREAU, and JULIET MITCHELL DIRBA, Administrative Patent Judges. DIRBA, Administrative Patent Judge. 1 Samsung Electronics America, Inc., which filed a petition in IPR2020- 00340, has been joined as a petitioner in IPR2019-01188. IPR2019-01188 IPR2020-00340 Patent 6,664,891 B2 2 ORDER Settlement as to Samsung Electronics America, Inc. Granting Request to Keep Agreement Confidential Termination Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. §§ 42.74, 42.72 IPR2019-01188 IPR2020-00340 Patent 6,664,891 B2 3 Microsoft Corporation (“Microsoft”) filed a Petition seeking institution of an inter partes review of claims 1–4, 8, 14–16 of U.S. Patent No. 6,664,891 B2 (Ex. 1001, “the ’891 patent”). Paper 2.2 After reviewing the Petition (Paper 2) and Patent Owner’s preliminary response (Paper 6), we instituted an inter partes review. Paper 9. After institution, Samsung Electronics America, Inc. (“Samsung”), filed a petition and a joinder motion in IPR2020-00340, requesting that Samsung be joined as a petitioner in IPR2019-01188. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2020-00340, Paper 1. After considering the parties’ papers, we instituted trial in IPR2020-00340, granted Samsung’s joinder motion, and added Samsung as a petitioner to IPR2019-01188. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2020-00340, Paper 10 (Institution Decision). In addition, we entered a copy of that decision in IPR2019-01188. Paper 15. On June 10, 2020, pursuant to our authorization, Petitioner Samsung and Patent Owner Uniloc 2017 LLC (“Uniloc”) filed a Joint Motion to Terminate as to Petitioner Samsung. Paper 16 (“Motion” or “Mot.”). Samsung and Uniloc also filed a copy of a settlement agreement (Ex. 2001), along with an authorized joint request to treat the settlement agreement as business confidential information and to keep it separate under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 17). In the Motion, Samsung and Uniloc state that they have settled their dispute with respect to “(i) this proceeding, (ii) the related district court 2 Unless otherwise indicated, all Paper numbers referenced herein refer to IPR2019-01188. IPR2019-01188 IPR2020-00340 Patent 6,664,891 B2 4 litigation styled Uniloc 2017 LLC v. Samsung Electronics America, Inc. et al, 2-19-cv-00259 (E.D. Tex.), and (iii) IPR2019-00965.” Mot. 2. They also “certify that Confidential Ex. 2001 is a true copy of the settlement agreement (with no redactions); there are no collateral agreements referred to in the settlement agreement; and there are no other agreements or understandings made in connection with, or in contemplation of, the termination of the inter partes review.” Id. at 4. 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.” Any agreement or understanding “made in connection with, or in contemplation of, the termination of an inter partes review” must be in writing, and a true copy of any such documents must be filed in the Office before termination. Id. § 317(b); accord 37 C.F.R. § 42.74(b). Because the moving parties (Samsung and Uniloc) represent that they have complied with the applicable requirements, we terminate the inter partes review with respect to Petitioner Samsung. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.74. We also grant the parties’ request to treat the settlement agreement (Exhibit 2001) as business confidential information. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). Microsoft, the original Petitioner in IPR2019-01188, is not a party to the settlement agreement and did not join the Motion. Accordingly, IPR2019-01188 remains pending as to Petitioner Microsoft Corporation. IPR2019-01188 IPR2020-00340 Patent 6,664,891 B2 5 ORDER Accordingly, it is: ORDERED that the Joint Motion to Terminate with respect to Samsung only is granted in IPR2019-01188; FURTHER ORDERED that the case caption for future submissions in IPR2019-01188 shall not list Samsung as a petitioner; FURTHER ORDERED that the settlement agreement (Exhibit 2001) be treated as business confidential information and be kept separate from the files of the involved U.S. Patent No. 6,664,891 B2; FURTHER ORDERED this paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a); and FURTHER ORDERED that IPR2020-00340 be terminated under 37 C.F.R. § 42.72. IPR2019-01188 IPR2020-00340 Patent 6,664,891 B2 6 PETITIONER: Andrew M. Mason Todd M. Siegel Joseph T. Jakubek John M. Lunsford KLARQUIST SPARKMAN, LLP andrew.mason@klarquist.com todd.siegel@klarquist.com joseph.jakubek@klarquist.com john.lunsford@klarquist.com Naveen Modi Joseph E. Palys Phillip W. Citroën PAUL HASTINGS LLP naveenmodi@paulhastings.com josephpalys@paulhastings.com phillipcitroen@paulhastings.com PATENT OWNER: Ryan Loveless Brett Mangrum James Etheridge Brian Koide Jeffrey Huang ETHERIDGE LAW GROUP ryan@eitheridgelaw.com brett@etheridgelaw.com jim@etheridgelaw.com brian@etheridgelaw.com jeff@etheridgelaw.com