UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., HARMAN INTERNATIONAL INDUSTRIES, INC.
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`Petitioners
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`v.
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`STATON TECHIYA, LLC,
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`Patent Owner
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`Case IPR2024-01032
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`U.S. Patent No. 11,683,643
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`JOINT MOTION TO TERMINATE PROCEEDING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., HARMAN INTERNATIONAL INDUSTRIES, INC.
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`Petitioners
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`v.
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`STATON TECHIYA, LLC,
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`Patent Owner
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`Case IPR2024-01032
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`U.S. Patent No. 11,683,643
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`JOINT MOTION TO TERMINATE PROCEEDING
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`PETITIONERS’ UPDATED EXHIBIT LIST
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`IPR2024-01032
`U.S. Patent No. 11,683,643
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`Exhibit No.
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`DESCRIPTION
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`U.S. Patent 11,683,643 (“’643pat.”)
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`Declaration of Nathanial Polish, Ph.D.
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`Curriculum Vitae of Nathanial Polish, Ph.D.
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`File History of U.S. Patent 11,683,643
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`U.S. Provisional Application 60/916,271
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`U.S. Application 12/115,349
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`U.S. Application 12/170,171
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`U.S. Application 13/956,767
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`U.S. Application 16/247,186
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`Family tree for the ’643pat.
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`Order on Claim Construction issued in Staton Techiya, LLC et al. v.
`Samsung Electronics Co., Ltd. et al., 2:21-cv-00413-JRG-RSP (E.D.
`Tex. Dec. 17, 2023)
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`Order Granting Proposed Docket Control Order in Staton Techiya,
`LLC et al. v. Samsung Electronics Co., Ltd. et al., 2:23-cv-00319
`(E.D. Tex. Dec. 17, 2023)
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`Samsung Electronics Co., Ltd. et al. v. Staton Techiya, LLC,
`IPR2022-01078, Paper No. 26 (Nov. 13, 2023)
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`Letter from Nikhil Krishnan to Thomas J. Friel, Jr.
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`U.S. Patent 6,754,359 (“Svean”)
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`U.S. Publication 2006/0153394A1 (“Beasley”)
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`U.S. Patent 5,251,263 (“Andrea”)
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`i
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`Exhibit No.
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`DESCRIPTION
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`IPR2024-01032
`U.S. Patent No. 11,683,643
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`U.S. Publication 2006/0140416 (“Berg”)
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`U.S. Publication 2018/0115818A1 (“Asada”)
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`U.S. Publication 2014/0270200A1 (“Usher”)
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`U.S. Publication 2001/0046304A1 (“Rast”)
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`U.S. Publication 2018/0160211A1 (“Kirsch”)
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`EP1594344 (“Stirnemann”)
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`U.S. Publication 2007/0009122A1 (“Hamacher”)
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`U.S. 5,862,065 (“Muthusamy”)
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`U.S. Publication 2002/0141599A1 (“Trajkovic”)
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`U.S. Publication 2003/0147544A1 (“Lichtblau”)
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`U.S. Patent 7,209,568 (“Arndt-568”)
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`U.S. Patent 6,826,286 (“Arndt-286”)
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`U.S. Publication 2020/0380945A1 (“Woodruff”)
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`U.S. Patent 6,415,034 (“Hietanen”)
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`EP 1385324 (“Pedersen”)
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`U.S. Publication 2005/0168824 (“Travers”)
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`U.S. Publication 2006/0135085 (“Chen”)
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`Excerpt from COMPUTER DICTIONARY (2d ed. 1994) (“Computer
`Dictionary”)
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`Kuo et al., “Active Noise Control: A Tutorial Review,” In Proc. IEEE
`87(6) (June 1999) (“Kuo”)
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`1037
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`U.S. Publication 2007/0223717A1 (“Boersma”)
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`ii
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`IPR2024-01032
`U.S. Patent No. 11,683,643
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`Exhibit No.
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`DESCRIPTION
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`1038
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`1039
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`1040
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`U.S. Patent 5,636,351 (“Lee”)
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`United States District Courts – National Judicial Caseload Profile
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`Stay Order issued in Staton Techiya, LLC v. Samsung Electronics
`Co., Ltd. et al., 2:23-cv-00319-JRG-RSP (E.D. Tex. Oct. 30, 2024)
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`1041
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`Confidential Settlement Agreement Between Samsung and Techiya
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`iii
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`IPR2024-01032
`U.S. Patent No. 11,683,643
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`Petitioners Samsung Electronics Co., Ltd., Samsung Electronics America,
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`Inc., and Harman International Industries, Inc. (“Petitioners”), and Patent Owner
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`Staton Techiya, LLC (“Patent Owner”) have reached a settlement. Pursuant to 35
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`U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioners and Patent Owner move to
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`terminate the present inter partes review proceeding.
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`I.
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`STATEMENT OF FACTS
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`Petitioners and Patent Owner have reached agreement (the “Settlement
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`Agreement”) to resolve their disputes.
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`Pursuant to 37 C.F.R. § 42.74(b), the Settlement Agreement is in writing, and
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`a true and correct copy is being filed as Confidential Exhibit 1041. The Settlement
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`Agreement is being filed electronically with access to “Board Only.” A “Joint
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`Request to Treat Settlement Agreement as Business Confidential Information” is
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`being filed concurrently with this Joint Motion to Terminate Proceeding, to treat the
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`Settlement Agreement as business confidential information and to keep it separate
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`from the files of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(c).
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`II. RELIEF REQUESTED
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`Termination of this inter partes review is requested, and all the parties
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`respectfully submit that such termination is justified. “There are strong public policy
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`1
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`IPR2024-01032
`U.S. Patent No. 11,683,643
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`reasons to favor settlement between the parties to a proceeding.” Consolidated Trial
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`Practice Guide 86 (Nov. 2019). “The Board expects that a proceeding will terminate
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`after the filing of a settlement agreement, unless the Board has already decided the
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`merits of the proceeding.” Id. (citing 35 U.S.C. §§ 317(a)).
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`The Board should terminate this proceeding as the Settling Parties jointly
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`request, for the following reasons.
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`First, the parties have met the statutory requirement that they file a “joint
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`request” to terminate before the Office “has decided the merits of the proceeding.”
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`35 U.S.C. § 317(a). Under section 317(a), an inter partes review shall be terminated
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`upon such joint request “unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.” There are no other preconditions recited
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`in 35 U.S.C. § 317(a).
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`Second, the parties have reached a settlement as to all the disputes in this
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`proceeding and as to the ’643 patent. A true copy of the Settlement Agreement is
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`filed concurrently herewith. See Confidential Ex. 1041. The parties request that the
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`Settlement Agreement be treated as business confidential information and be kept
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`separate from the files of this proceeding in accordance with 37 C.F.R. § 42.74(c).
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`There are no other agreements, written or oral, between or among the parties made
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`in connection with, or in contemplation of, the dismissal of the proceeding.
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`IPR2024-01032
`U.S. Patent No. 11,683,643
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`Third, termination would save significant further expenditure of resources by
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`the parties. Termination upon settlement, as requested, would also further the
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`purpose of inter partes review proceedings, which seek to provide an efficient and
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`less costly alternative forum for patent disputes. Further, maintaining the proceeding
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`would discourage further settlements, as patent owners in similar situations would
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`have a strong disincentive to settle if they perceived that an inter partes review
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`would continue regardless of a settlement.
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`III. Conclusion
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`For the foregoing reasons, Petitioners and Patent Owner respectfully request
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`termination of this inter partes review.
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`Respectfully submitted,
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`/Ali R. Sharifahmadian/
`Ali R. Sharifahmadian (Reg. No. 48,202)
`Counsel for Petitioners
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`Respectfully submitted,
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`/Ojeiku Aisiku/
`Ojeiku Aisiku (Reg. No. 71,180)
`Counsel for Patent Owner
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`3
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`Date: December 9, 2024
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`Date: December 9, 2024
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`IPR2024-01032
`U.S. Patent No. 11,683,643
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`CERTIFICATE OF SERVICE
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`I certify that on December 9, 2024, I caused a true and correct copy of the
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`foregoing Joint Motion to Terminate Proceeding to be served on the Patent Owner
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`via electronic mail to Patent Owner’s counsel of record below and pending substitute
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`counsel:
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`Ojeiku Aisiku (aisiku@kslaw.com)
`Roy Falik (rfalik@kslaw.com)
`techiya-ipr@kslaw.com
`James P. Brogan (jbrogan@steptoe.com)
`Jason Shapiro (jshapiro@devlinlawfirm.com)
`Timothy Devlin (tdevlin@devlinlawfirm.com)
`Patrick Delaney (pdelaney@devlinlawfirm.com)
`Christopher May (cmay@devlinlawfirm.com)
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`/Douglas Smith/
`Douglas Smith
`Arnold & Porter Kaye Scholer LLP
`3000 El Camino Real
`Five Palo Alto Square, Suite 500
`Palo Alto, CA 94306
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