`571-272-7822
`
`
` Paper No. 30
`
`Entered: January 11, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`Cases IPR2018-01106 & IPR2018-01108 (Patent 9,516,127 B2)
`Cases IPR2018-01113 & IPR2018-01114 (Patent 8,811,952 B2)
`Cases IPR2018-01124 & IPR2018-01125 (Patent 9,351,254 B2)
`Case IPR2018-01126 (Patent 9,516,129 B2)
`____________
`
`
`Before THU A. DANG, KARL D. EASTHOM, JONI Y. CHANG,
`THOMAS L. GIANNETTI, ROBERT J. WEINSCHENK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.1
`
`DANG, Administrative Patent Judge.
`
`
`DECISION2
`Granting Joint Motion to Terminate
`37 C.F.R. §§ 42.71(a) and 42.74
`
`
`
`1 This is not an expanded panel of the Board. It is a listing of all the Judges
`on the panels of the above-listed proceedings.
`2 This Decision governs each case based on the common issues presented.
`The parties shall not employ this heading style.
`
`
`
`
`
`
`IPR2018-01106 & IPR2018-01108 (Patent 9,516,127 B2)
`IPR2018-01113 & IPR2018-01114 (Patent 8,811,952 B2)
`IPR2018-01124 & IPR2018-01125 (Patent 9,351,254 B2)
`IPR2018-01126 (Patent 9,516,129 B2)
`
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively, “Petitioner”) and SEVEN Networks, LLC (“Patent
`Owner”) filed a “Joint Motion to Terminate Pursuant to 35 U.S.C. § 317”
`(Papers 24 (“Joint Motion to Terminate”)) and a “Joint Request to Treat
`Patent License and Settlement Agreement as Business Confidential
`Information” (Papers 25 (“Settlement Agreement”)) in each of the above-
`captioned cases (collectively “Joint Motions”).3 The parties represent that
`they have reached settlement as evidenced by the written Settlement
`Agreement, filing a true copy of same as required under 37 C.F.R.
`§ 42.74(b). Paper 24; Ex. 2100. The parties also represent that no other
`agreements exist between the parties concerning these cases. Paper 24, 5.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” As
`indicated in the Joint Motions, the parties are requesting termination prior to
`oral hearing and prior to the Board’s final written decision. Paper 24, 2. We
`also note that briefing has not been completed, as Patent Owner has not filed
`a Response, and Petitioner has not filed a Reply to Patent Owner’s
`Response.
`Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
`understanding between the parties made in connection with, or in
`
`
`3 Citations refer to Case IPR2018-01126. The parties filed materially similar
`papers in each case.
`
`2
`
`
`
`IPR2018-01106 & IPR2018-01108 (Patent 9,516,127 B2)
`IPR2018-01113 & IPR2018-01114 (Patent 8,811,952 B2)
`IPR2018-01124 & IPR2018-01125 (Patent 9,351,254 B2)
`IPR2018-01126 (Patent 9,516,129 B2)
`
`contemplation of, the termination of a proceeding shall be in writing and a
`true copy shall be filed with the Board before termination of the trial.” As
`the parties have filed their written settlement agreement, we determine it is
`appropriate to terminate each of these proceedings without rendering a Final
`Written Decision as to the patentability of challenged claims of the involved
`patents. See 37 C.F.R. §§ 42.72. 42.73, 42.74.
`
`ORDER
`
`It is
`ORDERED that the parties’ Joint Motion to Terminate in each of the
`above-captioned cases is granted, and each case is terminated; and
`FURTHER ORDERED that the parties’ Joint Request to Treat the
`Settlement Agreement as Business Confidential Information in each of the
`above-captioned cases is granted, and Exhibit 2100 in each case shall be
`kept separate from the pertinent file consistent with 37 C.F.R. § 42.74(b).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-01106 & IPR2018-01108 (Patent 9,516,127 B2)
`IPR2018-01113 & IPR2018-01114 (Patent 8,811,952 B2)
`IPR2018-01124 & IPR2018-01125 (Patent 9,351,254 B2)
`IPR2018-01126 (Patent 9,516,129 B2)
`
`PETITIONER:
`
`W. Karl Renner
`Jeremy Monaldo
`Roberto Devoto
`Kim Leung
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`devoto@fr.com
`leung@fr.com
`
`
`PATENT OWNER:
`
`Kenneth Weatherwax
`Nathan Lowenstein
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`Lowenstein & Weatherwax LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`
`
`4
`
`
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