Samsung Electronics America, Inc.v.Pragmatus Mobile LLC

Patent Trials and Appeals BoardAug 25, 2014

13404977 - (D) (P.T.A.B. Aug. 25, 2014)

Trials@uspto.gov 571-272-7822 Paper 13 Date Entered: August 25, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, AND SAMSUNG ELECTRONICS CO., LTD. Petitioners v. PRAGMATUS MOBILE LLC Patent Owner ____________ Case IPR2014-00582 Patent 8,149,124 Case IPR2014-00588 Patent 8,466,795 Case IPR2014-00589 Patent 8,466,795 ____________ Before JAMES P. CALVE, GLENN J. PERRY, and PATRICK R. SCANLON, Administrative Patent Judges. PERRY, Administrative Patent Judge. JUDGMENT Termination of Proceeding 37 C.F.R. § 42.73 Cases IPR2014-00582, -00588, and -00589 Patents 8,149,124, and 8,466,795 The parties have requested that the above-captioned trial proceedings be terminated pursuant to a settlement. On August 15, 2014, the Board authorized1 the parties to file a Joint Motion to Terminate in each of these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. On August 22, 2014, the parties filed a Joint Motion to Terminate2 in each of the above-captioned cases in accordance with 35 U.S.C. § 327(a) and Rule 42.74. Each Motion was supported by a copy of a settlement agreement styled “Release Terms3.” The joint motions indicated that the parties entered into a settlement agreement on July 23, 2014. Petitioner indicates that it “withdraws from and will not participate further” in the inter partes review. The parties indicate that both the ’124 and ’795 patents are the subject of Investigation No. 337-TA-905 by the United States International Trade Commission. They represent that on August 4, 2014, the ALJ in that Investigation issued an Initial Determination Granting Joint Motions to Terminate Investigation. This Initial Determination is subject to Commission review. 1 IPR2014-00582, Paper 8; IPR2014-00588, Paper 10, and IPR2014-00589, Paper 10. 2 IPR2014-00582, Paper 9; IPR2014-00588, Paper 11, and IPR2014-00589, Paper 11. 3 IPR2014-00582, Exhibit 1008; IPR2014-00588, Exhibit 1011, and IPR2014-00589, Exhibit 1112. Cases IPR2014-00582, -00588, and -00589 Patents 8,149,124, and 8,466,795 The parties indicate that the ’124 patent is involved in two infringement lawsuits in the District of Delaware which are on-going. Other matters involving the ’124 patent have been dismissed. The parties indicate that the ’795 patent is the subject of six infringement lawsuits in the District of Delaware which are on-going. Other matters involving the ’795 patent have been dismissed. Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72. 4 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. Cases IPR2014-00582, -00588, and -00589 Patents 8,149,124, and 8,466,795 ORDER It is, therefore, ORDERED that the joint motions to terminate these proceedings are GRANTED and the proceedings are hereby terminated. FOR PETITIONERS: W. Karl Renner ax@fr.com and Jeremy J. Monaldo IPR22394-0041IP1@fr.com FOR PATENT OWNER Ian M. Hughes ian@iplsllc.com and Scott W. McLellan scott@iplsllc.com

Samsung Electronics America, Inc. v. Pragmatus Mobile LLC