G. Holdings Ltd.

Patent Trials and Appeals Board

Sep 17, 2021

IPR2021-00884 (P.T.A.B. Sep. 17, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Entered: September 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,

v.

G. HOLDINGS LTD.,
Patent Owner.
____________

IPR2021-00884 (Patent 9,022,294 B2)
IPR2021-00885 (Patent 7,628,333 B2)1
____________

Before JONI Y. CHANG, JEFFREY S. SMITH, and JOHN A. HUDALLA,
Administrative Patent Judges.

HUDALLA, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
Granting Requests to Keep Settlement Agreement Confidential
37 C.F.R. § 42.74

1 This Order applies to both proceedings. We exercise our discretion to issue
one Order to be filed in each case. The parties are not authorized to use this
filing style for any subsequent papers.
IPR2021-00884 (Patent 9,022,294 B2)
IPR2021-00885 (Patent 7,628,333 B2)

2

I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively, “the Parties”) filed a joint motion to dismiss the Petition in
each of the above-identified proceedings. Paper 7 (“Joint Motions”).2 The
Parties also filed copies of a Settlement Agreement and certain related
agreements (Ex. 1019, collectively, “Settlement Agreement”), as well as
joint requests (Paper 8, “Joint Requests”) to treat the Settlement Agreement
as business confidential information and to keep the Settlement Agreement
separate from the files of the challenged patents.
II. DISCUSSION
In the Joint Motions, the Parties represent that they have reached an
agreement that settles all disputes between them. The Parties also represent
that they have filed true copies of the Settlement Agreement including “all
agreements between the Parties related to th[ese] proceeding[s],” and that
“there are no other collateral agreements or understandings, oral or written,
between the parties made in connection with, or in contemplation of, the
termination of th[ese] proceeding[s].” Joint Motions 1–2.
These proceedings are at an early stage. We have not considered the
merits of the Petitions, and we have not yet instituted trials in these
proceedings. In view of the early stage of these proceedings and the
settlement between the Parties, we determine that good cause exists to
dismiss the Petitions and terminate the proceedings with respect to the
Parties.

2 For expediency, we cite to papers and exhibits filed in IPR2021-00884,
unless otherwise indicated. The Parties filed similar papers and exhibits in
IPR2021-00885.
IPR2021-00884 (Patent 9,022,294 B2)
IPR2021-00885 (Patent 7,628,333 B2)

3

The Parties also request that the Settlement Agreement be treated as
business confidential information and be kept separate from the files of the
challenged patents. Joint Requests 1. After reviewing the Settlement
Agreement, we find that the Settlement Agreement contains confidential
business information regarding the terms of settlement. We determine that
good cause exists to treat the Settlement Agreement between the Parties as
business confidential information pursuant to 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
For the reasons discussed above, it is
ORDERED that the Joint Motions in IPR2021-00884 (Paper 7) and
IPR2021-00885 (Paper 7) are granted, the Petitions in IPR2021-00884 and
IPR2021-00885 are dismissed, and the proceedings in IPR2021-00884 and
IPR2021-00885 are terminated with respect to Petitioner and Patent Owner;
and
FURTHER ORDERED that the Joint Requests in IPR2021-00884
(Paper 8) and IPR2021-00885 (Paper 8) are granted, and the Settlement
Agreement shall be kept separate from the files of Patent 9,022,294 B2 and
Patent 7,628,333 B2 and made available only to Federal Government
agencies on written request, or to any person on a showing of good cause,
pursuant to 37 C.F.R. § 42.74(c).

IPR2021-00884 (Patent 9,022,294 B2)
IPR2021-00885 (Patent 7,628,333 B2)

4

For PETITIONER:
Naveen Modi
Chetan Bansal
David Valente
Kevin Stewart
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
chetanbansal@paulhastings.com
davidvalente@paulhastings.com
kevinstewart@paulhastings.com

For PATENT OWNER:
Rodney Miller
HALL BOOTH SMITH, P.C.
rmiller@hallboothsmith.com