SpaceTime3D

Patent Trials and Appeals BoardMar 15, 2021

IPR2020-01419 (P.T.A.B. Mar. 15, 2021)

Trials@uspto.gov Paper 11 571-272-7822 Date: March 15, 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. SPACETIME3D, INC., Patent Owner. IPR2020-01419 Patent 9,696,868 B2 Before BRIAN J. McNAMARA, JENNIFER MEYER CHAGNON, and TERRENCE W. McMILLIN, Administrative Patent Judges. CHAGNON, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-01419 Patent 9,696,868 B2 2 I. INTRODUCTION With the Board’s authorization, Petitioner and Patent Owner (collectively “the Parties”) filed a Joint Motion to Dismiss the Petition in the above-identified proceeding. Paper 9 (“Joint Motion”). In support of the Joint Motion, the Parties filed a copy of a Confidential Settlement and License Agreement (Ex. 1039 (“Settlement Agreement”)), as well as a Joint Request to Treat the Settlement Agreement as Business Confidential Information pursuant to and 37 C.F.R. § 42.74(c) (Paper 10 (“Joint Request”)). II. DISCUSSION In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek termination of the above-identified inter partes review proceeding, and that the filed copy of the Settlement Agreement is a true and complete copy and that “[t]here are no other agreements, oral or written, between the parties that were made in connection with, or in contemplation of, the requested dismissal.” Joint Motion 1. The Parties further represent that “[t]he parties have settled all disputes relating to the ’868 patent” and that “[t]he lawsuit between Petitioners and Patent Owner involving the ’868 patent is in the process of being dismissed concurrently with this inter partes review.” Id. at 2. This proceeding is at an early stage, and we have not yet decided whether to institute a trial in the proceeding. In view of the early stage of the proceeding and the settlement between the Parties, we determine that good cause exists to dismiss the petition and terminate the proceeding with respect to the Parties. IPR2020-01419 Patent 9,696,868 B2 3 The Parties also filed a Joint Request that the Settlement Agreement be treated as business confidential information and be kept separate from the file of the patent involved in this inter partes proceeding. Paper 10. After reviewing the Settlement Agreement between Petitioner and Patent Owner, we find that the Settlement Agreement contains confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreement between Petitioner and Patent Owner as business confidential information pursuant to 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion to Dismiss is granted, and the petition in IPR2020-01419 is dismissed and the proceeding is terminated; and FURTHER ORDERED that the Joint Request to Treat the Settlement Agreement as Business Confidential Information is granted, and the Settlement Agreement shall be kept separate from the files of Patent 9,696,868 B2 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). IPR2020-01419 Patent 9,696,868 B2 4 For PETITIONER: Robert Buergi Brent Yamashita Jonathan Hicks DLA Piper LLP (US) robert.buergi@dlapiper.com brent.yamashita@dlapiper.com jonathan.hicks@dlapiper.com For PATENT OWNER: Todd Fitzsimmons Gregory Cordrey IP Law todd@fitziplaw.com gcordrey@jmbm.com