Samsung Electronics America, Inc.v.Pragmatus Mobile LLC

Patent Trial and Appeal Board

Aug 25, 2014

11404206 (P.T.A.B. Aug. 25, 2014)

Trials@uspto.gov
571-272-7822
Paper 11
Date Entered: August 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS AMERICA, INC.,
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
AND SAMSUNG ELECTRONICS CO., LTD.

Petitioners

v.

PRAGMATUS MOBILE LLC
Patent Owner
____________

Case IPR2014-00582
Patent 8,149,124

Case IPR2014-00588
Patent 8,466,795

Case IPR2014-00589
Patent 8,466,795
____________

Before JAMES P. CALVE, GLENN J. PERRY, and
PATRICK R. SCANLON, Administrative Patent Judges.

PERRY, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.73
Cases IPR2014-00582, -00588, and -00589
Patents 8,149,124, and 8,466,795

The parties have requested that the above-captioned trial proceedings
be terminated pursuant to a settlement. On August 15, 2014, the Board
authorized1 the parties to file a Joint Motion to Terminate in each of these
proceedings along with a true copy of any and all settlement agreements
between them related to the patent at issue. On August 22, 2014, the parties
filed a Joint Motion to Terminate2 in each of the above-captioned cases in
accordance with 35 U.S.C. § 327(a) and Rule 42.74. Each Motion was
supported by a copy of a settlement agreement styled “Release Terms3.”
The joint motions indicated that the parties entered into a settlement
agreement on July 23, 2014. Petitioner indicates that it “withdraws from and
will not participate further” in the inter partes review.
The parties indicate that both the ’124 and ’795 patents are the subject
of Investigation No. 337-TA-905 by the United States International Trade
Commission. They represent that on August 4, 2014, the ALJ in that
Investigation issued an Initial Determination Granting Joint Motions to
Terminate Investigation. This Initial Determination is subject to
Commission review.

1 IPR2014-00582, Paper 8; IPR2014-00588, Paper 10, and IPR2014-00589,
Paper 10.
2 IPR2014-00582, Paper 9; IPR2014-00588, Paper 11, and IPR2014-00589,
Paper 11.
3 IPR2014-00582, Exhibit 1008; IPR2014-00588, Exhibit 1011, and
IPR2014-00589, Exhibit 1112.
Cases IPR2014-00582, -00588, and -00589
Patents 8,149,124, and 8,466,795

The parties indicate that the ’124 patent is involved in two
infringement lawsuits in the District of Delaware which are on-going. Other
matters involving the ’124 patent have been dismissed.
The parties indicate that the ’795 patent is the subject of six
infringement lawsuits in the District of Delaware which are on-going. Other
matters involving the ’795 patent have been dismissed.
Each of the captioned inter partes review cases is in its preliminary
stage. The Petition in each of the captioned cases has not been granted.
Under these circumstances, the Board determines that it is appropriate to
enter judgment4 and terminate each of the trials without rendering a final
written decision under 37 C.F.R. § 42.72.

4 A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
Cases IPR2014-00582, -00588, and -00589
Patents 8,149,124, and 8,466,795

ORDER

It is, therefore,
ORDERED that the joint motions to terminate these proceedings are
GRANTED and the proceedings are hereby terminated.

FOR PETITIONERS:
W. Karl Renner
ax@fr.com

and
Jeremy J. Monaldo
IPR22394-0040IP1@fr.com

FOR PATENT OWNER

Ian M. Hughes
ian@iplsllc.com

and
Scott W. McLellan
scott@iplsllc.com