Pictos Technologies Inc.

Patent Trials and Appeals BoardJun 25, 2021

IPR2021-00436 (P.T.A.B. Jun. 25, 2021)

Trials@uspto.gov Paper 9 571-272-7822 Entered: June 25, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD., Petitioner, v. PICTOS TECHNOLOGIES, INC., Patent Owner. ____________ IPR2021-00434 (Patent 7,064,768 B1) IPR2021-00435 (Patent 7,064,768 B1) IPR2021-00436 (Patent 7,323,671 B1) IPR2021-00437 (Patent 6,838,651 B1) IPR2021-00438 (Patent 7,800,145 B2) IPR2021-00557 (Patent 6,838,651 B1)1 ____________ Before ROBERT J. WEINSCHENK, MONICA S. ULLAGADDI, and JULIET MITCHELL DIRBA, Administrative Patent Judges. PER CURIAM. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 1 This decision applies to each of the identified proceedings, so we exercise our discretion to issue a single decision to be entered in each proceeding. The parties are not authorized to use this style heading. IPR2021-00434 (Patent 7,064,768 B1) IPR2021-00435 (Patent 7,064,768 B1) IPR2021-00436 (Patent 7,323,671 B1) IPR2021-00437 (Patent 6,838,651 B1) IPR2021-00438 (Patent 7,800,145 B2) IPR2021-00557 (Patent 6,838,651 B1) 2 On June 23, 2021, with Board authorization, Petitioner (Samsung Electronics Co., Ltd.) and Patent Owner (Pictos Technologies, Inc.) filed Joint Motions to Terminate the above-referenced proceedings (Paper 8 (“Mot.”)), as well as Joint Requests to Keep Separate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 9).2 The parties also filed what the parties indicate is a true and complete copy of the parties’ agreements to terminate these proceedings (Exhibits 1025, 1026, and 1027 (collectively, the “Agreements”)). Mot. 3. In the Joint Motions, the parties represent that they have reached an agreement to terminate each of the above-referenced proceedings. Mot. 1. The parties also indicate that they are filing motions to dismiss the related district court and ITC actions. Id. at 3. These proceedings are at an early stage, and we have not yet decided whether to institute a trial in any of these cases. In view of the early stage of these proceedings and the agreement between the parties, we determine that good cause exists to terminate these proceedings. Therefore, we grant the Joint Motions to Terminate. In addition, after reviewing the Joint Requests and the Agreements, we find that each of Exhibits 1025, 1026, and 1027 include agreements involving Petitioner and Patent Owner that contain confidential business 2 For simplicity, we refer to the papers filed in IPR2020-00434. Similar papers were filed in IPR2021-00435 (Papers 8 and 9), IPR2021-00436 (Papers 7 and 8), IPR2021-00437 (Papers 7 and 8), IPR2021-00438 (Papers 7 and 8), and IPR2021-00557 (Papers 9 and 10). IPR2021-00434 (Patent 7,064,768 B1) IPR2021-00435 (Patent 7,064,768 B1) IPR2021-00436 (Patent 7,323,671 B1) IPR2021-00437 (Patent 6,838,651 B1) IPR2021-00438 (Patent 7,800,145 B2) IPR2021-00557 (Patent 6,838,651 B1) 3 information regarding the terms of the resolution of these proceedings. Accordingly, we determine that good cause exists to grant the Parties’ Joint Requests and treat these exhibits as business confidential information pursuant to 37 C.F.R. § 42.74(c). This determination does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is: ORDERED that the Joint Motion to Terminate in each of the above- identified proceedings is granted; FURTHER ORDERED that the Joint Request to Keep Separate in each of the above-identified proceedings is granted; FURTHER ORDERED that the Agreements (Exhibits 1025, 1026, and 1027), which were filed in each proceeding, shall be kept separate from the files of Patent 7,800,145 B2, Patent 7,323,671 B1, Patent 7,064,768 B1, and Patent 6,838,651 B1 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); FURTHER ORDERED that the Petition in each of the above- identified proceedings is dismissed, and IPR2021-00434, IPR2021-00435, IPR2021-00436, IPR2021-00437, IPR2021-00438, and IPR2021-00557 are each terminated with respect to both Petitioner and Patent Owner. IPR2021-00434 (Patent 7,064,768 B1) IPR2021-00435 (Patent 7,064,768 B1) IPR2021-00436 (Patent 7,323,671 B1) IPR2021-00437 (Patent 6,838,651 B1) IPR2021-00438 (Patent 7,800,145 B2) IPR2021-00557 (Patent 6,838,651 B1) 4 FOR PETITIONER: Naveen Modi Joeph Palys Phillip Citroen Arvind Jairam PAUL HASTING LLP naveenmodi@paulhastings.com josephpalys@paulhastings.com phillipcitroen@paulhastings.com arvindjairam@paulhastings.com FOR PATENT OWNER: Kenneth Fagin Vincent DeLuca POTOMAC LAW GROUP, PLLC kfagin@potomaclaw.com vdeluca@potomaclaw.com