`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
`Case IPR2017-01802
`
`Patent 7,535,890
`___________________________________
`
`
`JOINT MOTION TO TERMINATE IPR PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`lPR2017-01802
`
`Patent 7,535,890
`
`Petitioner Samsung Electronics America, Inc. (“Samsung”) and Patent Owner
`
`Uniloc 2017 LLC (“Patent Owner”) have reached a settlement. Pursuant to 35 U.S.C.
`
`§ 317(a) and 37 C.F.R. § 42.74, Samsung and Patent Owner jointly move to
`
`terminate the present inter partes review proceeding.
`
`1.
`
`STATEMENT OF FACTS
`
`Samsung and Patent Owner have reached an agreement to resolve the
`
`Parties” disputes. The settlement agreement settles (i) this proceeding, (ii) IPR2017-
`
`01797, IPR2017-01798, IPR2017-01799, IPR2017-01800, and IPR2017-01801, and
`
`(iii) the related district court litigation styled Uniloc USA, Inc. et a! v. Samsung
`
`Electronics America, Inc. 2-16-cv-00642 (EDTX). A stipulation of voluntary
`
`dismissal with prejudice was filed in the district court litigation on May 27, 2020.
`
`Contemporaneously with this Joint Motion to Terminate, the Parties are also filing
`
`Joint Motions to Terminate lPR2017-Ol797,
`
`lPR20l7-Ol798,
`
`lPR2017-0l799,
`
`[PR2017-01800, and lPR20l7-01801. Exhibit 2008 filed concurrently herewith
`
`provides the status of related district court cases or USPTO proceedings with respect
`
`to all parties.
`
`In addition,
`
`the following appeals from USPTO proceedings
`
`concerning related patents are pending at the Federal Circuit:
`
`Case Name
`
`Appeal No.
`
`IPR No.
`
`Patent
`
`Appie Inc. v. Uniloc 201 7 19-1 151 (Lead)
`LLC
`
`IPR2017-00222
`
`8243 723 by
`Rojas
`
`
`
`lPR2017-01802
`
`Patent 7,535,890
`
`Case Name
`
`Appeal No.
`
`IPR No.
`
`Patent
`
`Facebook, Inc. v. Unilcc
`201 7 LLC
`
`19-1179
`
`lPR2017-00222
`
`Apple Inc. v. Unt‘loc 2017 19-1203
`LLC
`
`Unilcc 201 7 LLC v. Apple 19-1 197
`Inc.
`
`lPR2017-00222
`
`lPR2017-00221
`
`Untloc 201 7 LLC v.
`Facebook Inc.
`
`Untloc 2017 LLC v.
`Facebook Inc.
`
`Facebook, Inc. v. Uniloc
`201 7 LLC
`
`19-1688 (Lead)
`
`lPR2017-01427
`
`19-1689
`
`lPR2017-01428
`
`19-2159
`
`IPR2017-01668
`
`Apple, Inc. v. Uniloc 20l7 19-2160
`LLC
`
`IPR2OI7-01668
`
`Uniloc 2017 LLC v.
`Facebook, Inc.
`
`19-2162 (Lead)
`
`IPR20l7-01667
`
`8243723 by
`Rojas
`
`8243723 by
`Rojas
`
`7535890 by
`Rojas
`
`8995433 by
`Rojas
`
`8995433 by
`Rojas
`
`8724622 by
`Rojas
`
`8724622 by
`Rojas
`
`8724622 by
`Rojas
`
`Pursuant to 37 CPR. §42.74(b),
`
`the Parties’ settlement agreement is in
`
`writing, and a true and correct copy is being filed as Exhibit 2007. The settlement
`
`agreement is being filed electronically with access to “Board Only.” A “Joint
`
`Request That Settlement Agreement Be Treated as Business Confidential
`
`Information and Kept Separate Pursuant to 35 U.S.C. § 317(b) and 3 7 C.F.R.
`
`§ 42. 74” is being filed concurrently with this Joint Motion to Terminate seeking to
`
`treat the settlement agreement as business confidential information and to keep it
`
`separate from the files of the involved patent pursuant to 35 U.S.C. § 317(b) and 37
`
`
`
`IPR2017-01802
`Patent 7,535,890
`
`C.F.R. § 42.74(c). The Board provided authorization to file this motion in an email
`
`dated June 9, 2020.
`
`II. ARGUMENT
`
`Termination of this inter partes review is requested, and the Parties
`
`respectfully submit that such termination is justified. “There are strong public policy
`
`reasons to favor settlement between the parties to a proceeding.” Consolidated Trial
`
`Practice Guide 86 (Nov. 2019). “The Board expects that a proceeding will terminate
`
`after the filing of a settlement agreement, unless the Board has already decided the
`
`merits of the proceeding.” Id. (citing 35 U.S.C. §§ 317(a)).
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`The Board should terminate this proceeding, as the Parties jointly request, for
`
`the following reasons.
`
`First, Samsung and Patent Owner have met the statutory requirement that they
`
`file a “joint request” to terminate before the Office “has decided the merits of the
`
`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review shall
`
`be terminated upon such joint request “unless the Office has decided the merits of
`
`the proceeding before the request for termination is filed.” There are no other
`
`preconditions of 35 U.S.C. § 317(a).
`
`Second, Samsung and Patent Owner have reached a settlement as to all the
`
`disputes in this proceeding and as to the ’890 patent. A true copy of the settlement
`
`agreement is filed concurrently herewith. See Confidential Ex. 2007. Samsung and
`
`
`
`4
`
`
`
`IPR2017-01802
`Patent 7,535,890
`
`Patent Owner request that the settlement agreement be treated as business
`
`confidential information and be kept separate from the files of this proceeding in
`
`accordance with 37 C.F.R. § 42.74(c). There are no other agreements, oral or written,
`
`between the parties made in connection with, or in contemplation of, the termination
`
`of this proceeding.
`
`Third, termination would save significant further expenditure of resources by
`
`the Parties. Termination upon settlement as requested would also further the
`
`purpose of inter partes review proceedings to provide an efficient and less costly
`
`alternative forum for patent disputes. Further, maintaining the proceeding would
`
`discourage further settlements, as patent owners in similar situations would have a
`
`strong disincentive to settle if they perceived that an inter partes review would
`
`continue regardless of a settlement.
`
`III. CONCLUSION
`
`For the foregoing reasons, Samsung and Patent Owner respectfully request
`
`termination of this inter partes review.
`
`
`
`
`
`5
`
`
`
`IPR2017-01802
`Patent 7,535,890
`
`
`Respectfully submitted,
`
`
`/ Ryan Loveless /
`Lead Counsel
`Ryan Loveless
`Reg. No. 51,970
`ETHERIDGE LAW GROUP
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, Texas 76092
`Telephone: (972) 292-8303
`
`Back-up Counsels
`Brett A. Mangrum
`Reg. No. 64,783
`
`Attorneys for Patent Owner
`
`Date: June 10, 2020
`
`
`Respectfully submitted,
`
`
`/Naveen Modi/
`Lead Counsel
`Naveen Modi
`(Reg. No. 46,224)
`
`Back-up Counsels
`Joseph E. Palys
`(Reg. No. 46,508)
`Phillip W. Citroën
`(Reg. No. 66,541)
`Michael A. Wolfe
`(Reg. No. 71,922)
`
`Attorneys for Petitioner
`
`Date: June 10, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2017-01802
`Patent 7,535,890
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing document has
`
`been served in its entirety via email, pursuant to the parties’ agreement, to the
`
`following attorneys of record listed below:
`
`Lead Counsel: Naveen Modi (Reg. No. 46,224).
`
`Backup Counsel: Joseph E. Palys (Reg. No. 46,508), Phillip W.
`Citroën (Reg. No. 66,541), and Michael A. Wolfe (Reg. No. 71,922)
`
`E-mail: PH-Samsung-Uniloc-IPR@paulhastings.com.
`
`
`Dated:
`
`June 10, 2020
`
`
`
`By:
`
`/ Ryan Loveless /
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
`
`
`
`
`
`7
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`
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