Clear Imaging Research, LLC

Patent Trials and Appeals Board

Jan 19, 2021

IPR2020-01398 (P.T.A.B. Jan. 19, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: January 19, 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.
CLEAR IMAGING RESEARCH, LLC,
Patent Owner.
____________

IPR2020-01397 and IPR2020-013981
Patent 10,389,944 B2
____________

Before JONI Y. CHANG , KRISTEN L. DROESCH, and
JASON M. REPKO, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 This order is being filed in each proceeding in the caption. The parties,
however, are not authorized to use this style of filing in subsequent papers,
without prior authorization.
IPR2020-01397 and IPR2020-01398 (Patent 10,389,944 B2)

2
In each above-identified proceeding, Petitioner and Patent Owner
jointly move to terminate inter parte review (“IPR”) proceeding in light of
their settlement that resolves their dispute regarding the patent at issue.
Paper 9 (“Mot.”).2 The parties also filed a true copy of their written
settlement agreement made in connection with, or in contemplation of, the
termination under 37 C.F.R. § 42.74(b), in each above-identified proceeding.
Ex. 1026. In each Motion, the parties indicate that “Patent Owner has
dismissed U.S. Patent No. 10,389,944 B2 (“the ’944 patent”) from the
district court proceeding and Petitioner has agreed to terminate this petition.”
Mot. 1. The parties contend that “[t]ermination is proper because the Parties
are jointly requesting termination, the review is still in its early stages, and
the Office has not yet ‘decided the merits of the proceeding before the
request for termination is filed.’” Id. We agree.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. See Consolidated Trial Practice Guide3 at
86; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Here, the parties indicate
that they “filed a joint stipulation to dismiss their respective claims and
counterclaims with prejudice” in the related parallel District Court litigation,
and “the Court ordered dismissal with prejudice on January 5, 2021.”
Mot. 2−3; Ex. 1027. Therefore, if these IPR proceedings are terminated,
there are no other pending proceedings between the Petitioner and Patent
Owner relating to the ’944 patent. Mot. 3.

2 For purposes of expediency, we refer to the papers and exhibits filed in
IPR2020-01397. Similar papers and exhibits were filed in IPR2020-01398.
3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-01397 and IPR2020-01398 (Patent 10,389,944 B2)

3
Moreover, each of these IPR proceedings is in an early stage. We
have not yet determined whether a trial should be instituted in these
proceedings.
Upon review of the procedural posture of these IPR proceedings and
the facts before us, we determine that the parties’ requests have merit and
that it is appropriate to terminate these IPR proceedings. See 37 C.F.R.
§§ 42.2, 42.72.

ORDER
In consideration of the foregoing, it is hereby
ORDERED that the Joint Motions to Terminate filed in these IPR
proceedings are granted.

IPR2020-01397 and IPR2020-01398 (Patent 10,389,944 B2)

4
PETITIONER:
W. Karl Renner
Jeremy Monaldo
Dan Smith
FISH & RICHARDSON P.C.
axf-ptab@fr.com
jjm@fr.com
dsmith@fr.com

PATENT OWNER:

Brett Cooper
Kevin Schubert
Christopher P. McNett
Scott Hejny
McKOOL SMITH, P.C.
bcooper@mckoolsmith.com
kschubert@mckoolsmith.com
cmcnett@mckoolsmith.com
shejny@mckoolsmith.com