Nordic Interactive Technologies LLC

Patent Trials and Appeals BoardApr 20, 2021

IPR2020-01603 (P.T.A.B. Apr. 20, 2021)

Trials@uspto.gov Paper No. 15 571-272-7822 Entered: April 20, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ SAMSUNG ELECTRONICS CO., LTD, and SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. NORDIC INTERACTIVE TECHNOLOGIES, LLC, Patent Owner. _______________ IPR2020-01603 Patent 6,345,095 B1 ____________ Before THOMAS L. GIANNETTI, GREGG I. ANDERSON, and CHARLES J. BOUDREAU, Administrative Patent Judges. GIANNETTI, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-01603 Patent 6,345,095 B1 2 I. BACKGROUND On September 9, 2020, Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, “Petitioner” or “Samsung”) filed a Petition (Paper 2) requesting inter partes review of claims 16, 19–23, and 25–30 of U.S. Patent No. 6,345,095 B1 (Ex. 1001, “the ’095 patent”). Patent Owner, Nordic Interactive Technologies, LLC, filed a Preliminary Response. Paper 7. II. DISCUSSION On April 19, 2021, with Board authorization, Petitioner and Patent Owner filed a “Joint Motion to Terminate Proceedings” (Paper 13, “Joint Motion to Terminate”) and a “Joint Motion to File Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317” (Paper 14). The parties represent that they have resolved their disputes and reached settlement regarding the challenged patent as evidenced by a written settlement agreement, which they have filed as required under 37 C.F.R. § 42.74(b). Paper 13, 2; Ex. 1012. The parties represent that dismissal of the district court action involving the ’095 patent is pending and there are no other pending district court actions in which the ’095 patent is asserted. Paper 13, 2. The parties also represent there are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of this proceeding. Id. at 3. This case is in its preliminary stage. The Board has not issued a decision on institution. At this early stage, we determine that termination is warranted for the reasons stated in the Joint Motion to Terminate. We further determine that the Settlement Agreement (Ex. 1012) filed by the parties constitutes business confidential information. Therefore, we IPR2020-01603 Patent 6,345,095 B1 3 find there is good cause to grant the parties’ Joint Motion to File Agreement as Business Confidential (Paper 14). III. ORDER In consideration of the foregoing, it is hereby ORDERED that the parties’ Joint Motion to Terminate is granted and this case is terminated; and FURTHER ORDERED that the parties’ Joint Motion to File Settlement Agreement as Business Confidential Information is granted, and Exhibit 1012 shall be sealed and kept separate from the files of the ’095 patent, consistent with 37 C.F.R. § 42.74(b). IPR2020-01603 Patent 6,345,095 B1 4 FOR PETITIONER: Jeffery Miller Jin-Suk Park ARNOLD & PORTER KAYE SCHOLERLLP jmillerptab@apks.com jin.park@arnoldporter.com FOR PATENT OWNER: Hao Ni Neal Massand Timothy Wang NI, WANG & MASSAND, PLLC hni@nilawfirm.com nmassand@nilawfirm.com twang@nilawfirm.com