IPR2021-00583 (P.T.A.B. Jun. 10, 2021)

Ancora Technologies Inc.

Patent Trials and Appeals BoardJun 10, 2021

IPR2021-00583 (P.T.A.B. Jun. 10, 2021)

Trials@uspto.gov Paper 12 571-272-7822 Date: June 10, 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. ANCORA TECHNOLOGIES, INC., Patent Owner. ____________ IPR2021-00583 Patent 6,411,941 B1 ____________ Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 Dismissing Motion for Joinder 35 U.S.C. § 315(c); 37 C.F.R. § 42.122 IPR2021-00583 Patent 6,411,941 B1 2 Petitioner and Patent Owner jointly move to terminate the instant inter parte review proceeding in light of their settlement that resolves their dispute regarding the patent at issue. Paper 11 (“Mot.”). The parties also filed a true copy of their settlement agreement made in connection with, or in contemplation of, the termination under 37 C.F.R. § 42.74(b) (Ex. 2016) and a joint request to have their settlement agreement treated as confidential business information under 37 C.F.R. § 42.74(c). Paper 10. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See Consolidated Trial Practice Guide1 at 86; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Here, the parties indicate that the district court has stayed the parallel litigation to allow the parties to “complete certain prerequisites to dismissal.” Mot. 1. According to the parties, “[t]he court’s order and impending dismissal and the parties’ concurrent settlement agreement have resolved any claim by Patent Owner that Petitioners . . . infringe claims of U.S. Patent No. 6,411,941 (the ’941 Patent) that is the subject of this proceeding.” Id. Moreover, this proceeding is in an early stage. We have not yet determined whether a trial should be instituted in this proceeding and have not yet decided Petitioner’s Motion for Joinder (Paper 5). Upon review of the procedural posture of this proceeding and the facts before us, we determine that the parties’ Joint Motion to Terminate has merit and that it is appropriate to terminate this proceeding. See 37 C.F.R. §§ 42.2, 42.72. In view of the termination, Petitioner’s Motion for Joinder is dismissed as moot. 1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2021-00583 Patent 6,411,941 B1 3 ORDER In consideration of the foregoing, it is hereby ORDERED that the Joint Motion to Terminate is granted, and this proceeding hereby is terminated as to all parties; FURTHER ORDERED that the Joint Request to File Settlement Agreement as Business Confidential Information and to keep such settlement agreement separate from the patent file, and to make it available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted; and FURTHER ORDERED that Petitioner’s Motion for Joinder is dismissed as moot. IPR2021-00583 Patent 6,411,941 B1 4 PETITIONER: Anupam Sharma Peter Chen Gregory Discher Sinan Utku Richard Rainey COVINGTON & BURLING LLP asharma@cov.com pchen@cov.com gdischer@cov.com rrainey@cov.com PATENT OWNER: Nicholas Peters David Gosse Paul Henkelmann FITCH, EVEN, TABIN & FLANNERY LLP ntpete@fitcheven.com dgosse@fitcheven.com phenkelmann@fitcheven.com