Uniloc 2017 LLC

Patent Trials and Appeals BoardJun 16, 2020

IPR2020-00045 (P.T.A.B. Jun. 16, 2020)

Trials@uspto.gov Paper 10 571-272-7822 Entered: June 16, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. UNILOC 2017 LLC, Patent Owner. IPR2020-00045 Patent 6,980,522 B2 Before KRISTEN L. DROESCH, DAVID C. McKONE, and SHEILA F. McSHANE, Administrative Patent Judges. DROESCH, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-00045 Patent 6,980,522 B2 2 I. DISCUSSION Pursuant to authorization by the Board, the parties filed the following: (1) a joint motion to terminate the proceeding (Paper 8, “Joint Motion to Terminate”); (2) a true copy of the parties’ settlement agreement (Ex. 2001); and (3) a joint request that the settlement agreement be treated as business confidential information and to keep separate pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 9, “Joint Request”). Oral argument has not been held, and a final written decision has not been entered. In the Joint Motion to Terminate, the parties indicate that they have settled all their disputes in this proceeding, and have agreed to terminate the proceeding. Paper 8, 4. The parties aver that “[t]here are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of this proceeding.” Id. Under these particular circumstances, we determine that it is appropriate to terminate the proceeding without rendering a final written decision. See 35 U.S.C. § 317; 37 C.F.R. § 42.72. In addition, we have reviewed the true copy of the parties’ settlement agreement (Ex. 2001) and determine that good cause exists to treat this settlement agreement as business confidential information and to keep it separate from the file of U.S Patent No. 6,980,522 (Ex. 1001, “the ’522 Patent”) pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2020-00045 Patent 6,980,522 B2 3 II. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Joint Request (Paper 9) to treat the settlement agreement (Ex. 2001) as business confidential information and to keep separate from the file of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted; FURTHER ORDERED that the settlement agreement (Ex. 2001) shall be treated as business confidential information, kept separate from the file of the ’522 Patent, and made available only to Federal Government agencies on written request to the Board, or to any person on a showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and FURTHER ORDERED that the Joint Motion to Terminate (Paper 8) is granted, and the proceeding is terminated. IPR2020-00045 Patent 6,980,522 B2 4 PETITIONER: Naveen Modi Joseph E. Palys Phillip Citroen PAUL HASTINGS LLP naveenmodi@paulhastings.com josephpalys@paulhastings.com phillipcitroen@paulhastings.com PATENT OWNER: Ryan Loveless Brett Mangrum James Etheridge Jeffrey Huang ETHRIDGE LAW GROUP ryan@etheridgelaw.com brett@etheridgelaw.com jim@etheridgelaw.com jeff@etheridgelaw.com