Telefonaktiebolaget LM Ericsson c/o: Duane Morris LLP

Patent Trials and Appeals Board

Aug 3, 2021

IPR2021-00732 (P.T.A.B. Aug. 3, 2021)

Trials@uspto.gov Paper 8
571-272-7822 Date: August 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,

v.

TELEFONAKTIEBOLAGET LM ERICSSON,
Patent Owner.
____________
IPR2021-00446
IPR2021-00447
IPR2021-00450
IPR2021-00459
IPR2021-00460
IPR2021-00486
IPR2021-00487

IPR2021-00508
IPR2021-00509
IPR2021-00536
IPR2021-00537
IPR2021-00539
IPR2021-00567
IPR2021-00568
IPR2021-00569
IPR2021-00587
IPR2021-00588
IPR2021-00613
IPR2021-00614
IPR2021-00615
IPR2021-00643
IPR2021-00644
IPR2021-00645
IPR2021-00683
IPR2021-00684
IPR2021-00685
IPR2021-00729
IPR2021-00730
IPR2021-00731
IPR2021-007321
____________

Before MIRIAM L. QUINN, NATHAN A. ENGELS,
SHEILA F. McSHANE, and JULIET MITCHELL DIRBA, Administrative
Patent Judges.2

Opinion for the Board filed per curiam.
Opinion dissenting filed by QUINN, Administrative Patent Judge.

1 We exercise our discretion to issue a single order to be entered in each of
the identified proceedings. The parties are not authorized to use this style
heading in subsequent papers. We do not list the patents at issue in these
proceedings because this Paper does not address or depend upon the
substance of any of those patents.
2 This is not an expanded panel of the Board; rather, the four judges are
paneled in various groups of three in the identified proceedings.
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

2

ORDER
Dismissal Prior to Institution of Trial
37 C.F.R. § 42.71(a)

In an e-mail dated May 14, 2021, the Board authorized Petitioner to
file unopposed motions to dismiss or terminate these proceedings prior to
institution. The Board’s e-mail stated that if Petitioner is requesting
dismissal or termination pursuant to a settlement between the parties, the
parties should file a copy of any settlement agreements.
On May 19, 2021, in each proceeding identified above, Petitioner
filed an Unopposed Motion to Dismiss the Petition for Inter Partes Review
(collectively the “Motions”). IPR2021-00446, Paper 6.3 In the Motions,
Petitioner states that the parties have settled their disputes and that good
cause exists for dismissal. Id. at 5–6. Petitioner also argues that it should
not be required to file a copy of the parties’ settlement agreement. Id.
DISCUSSION
The first of these proceedings began with a Petition filed on January
29, 2021. Paper 2; see Paper 3 (Notice of Filing Date Accorded entered
February 9, 2021). Only a few months later, before the Board issued a
decision on institution in any of the proceedings, the parties reached a
settlement, and Petitioner requested dismissals. Paper 6.
The Board generally has requested that parties file copies of
settlement agreements when seeking dismissal or termination of a
proceeding pursuant to a settlement. Where a proceeding has passed the

3 In the interest of expediency, we cite only to the papers in IPR2021-
00446. Similar motions were also filed in each of the other proceedings.
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

3

institution stage and has entered the trial phase, that requirement arises under
35 U.S.C. § 317. Section 317 expressly requires that any agreements made
in connection with termination of an “instituted” inter partes review shall be
filed with the Office before termination. Section 317 does not apply to
dismissal or termination of a proceeding prior to institution. See Rules of
Practice for Trials Before the Patent Trial and Appeal Board and Judicial
Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48,612,
48,625 (Aug. 14, 2012) (“35 U.S.C. 135(e), and 317, as amended, and 35
U.S.C. 327 will govern settlements of Board trial proceedings but do not
expressly govern pre-institution settlement.”).
Less clear is 37 C.F.R. § 42.74, which also addresses settlement.
Section 42.74(b) states: “Any agreement or understanding between the
parties made in connection with, or in contemplation of, the termination of a
proceeding shall be in writing and a true copy shall be filed with the Board
before the termination of the trial.”4 Thus, § 42.74(b) addresses settlement
and termination of a “proceeding,” requiring that agreements to terminate a
proceeding must be in writing. Section 42.74(b) also states that a copy of an
agreement to terminate a proceeding “shall be filed with the Board before
the termination of the trial.” Although the term “proceeding” includes trial
and preliminary proceedings, “trial” is defined in 37 C.F.R. § 42.2 as “a

4 Relevant to that language, the Definitions in 37 C.F.R. § 42.2 provide that
“Proceeding means a trial or preliminary proceeding”; “Trial means a
contested case instituted by the Board [that] begins with a written decision
notifying the petitioner and patent owner of the institution of the trial”; and
“Preliminary Proceeding begins with the filing of a petition for instituting a
trial and ends with a written decision as to whether a trial will be instituted.”
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

4

contested case instituted by the Board” that “begins with a written decision
notifying the petitioner and patent owner of the institution of the trial.” As
such, even though § 42.74(b) uses “proceeding” in the first instance to
require that settlement agreements be in written form even for proceedings
in the preliminary, pre-institution stage, in contrast, the language requiring
parties to file settlement agreements is tied to, and a prerequisite for,
“termination of the trial.” The second requirement is consistent with § 317.
Conversely, to read the language requiring parties to file settlement
agreements to apply to all “proceedings” would read out the language
“before termination of the trial” from the Rule.
In further contrast to “termination of the trial,” the Board’s regulations
permit “dismissal” of a petition. Specifically, dismissal is one of three
possible outcomes provided under 37 C.F.R. § 42.71(a): “The Board . . .
may grant, deny, or dismiss any petition . . . .” No statute or regulation
addresses settlement agreements in conjunction with “dismissals” of a
petition.
Thus, although the Board has generally required parties to file
settlement agreements without regard to the stage of the proceeding, the
applicable statutes and regulations make a distinction: for instituted
proceedings the statutes and regulations specifically require parties to file
copies of written settlement agreements; for preliminary proceedings, the
regulations provide for “dismissal” of a petition without specifically
requiring that parties file settlement agreements. Accordingly, because there
are no explicit provisions in the statutes or regulations that settlement
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

5

agreements to be filed in pre-institution dismissals, we decline to impose the
requirement here.
Petitioner has shown good cause for dismissal of its Petitions. The
parties have settled their dispute, the proceedings are early in the preliminary
stages, Patent Owner has not filed any preliminary responses, and the Board
has not issued any decisions or otherwise invested in the merits of these
proceedings. Dismissing the Petitions at this stage promotes the Board’s
objective of achieving “just, speedy, and inexpensive resolution of every
proceeding.” 37 C.F.R. § 42.1(b). It also facilitates settlement. See PTAB
Consolidated Trial Practice Guide 86 (Nov. 2019)5 (“There are strong public
policy reasons to favor settlement between the parties to a proceeding.”).
Accordingly, we grant Petitioner’s Unopposed Motion to Dismiss the
Petition for Inter Partes Review in each of these proceedings. This Order
does not constitute a final written decision under 35 U.S.C. § 318(a).
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Unopposed Motion to Dismiss Petition
for Inter Partes Review in each of these proceedings is granted, the Petition
in each of these proceedings is dismissed, and the proceedings are
terminated.

5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

6

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,

v.

TELEFONAKTIEBOLAGET LM ERICSSON,
Patent Owner.

QUINN, Administrative Patent Judge, dissenting.

I respectfully dissent from the majority’s decision dismissing the
instant Petitions because the majority fails to require the parties to file the
settlement agreement.
The rules of the Board provide a single rule expressly authorizing
terminations without rendering a final written decision: 37 C.F.R. § 42.72.
That rule, however, refers to terminating a “trial,” which the majority
correctly concludes refers to an instituted proceeding. Thus, Rule 72 does
not apply to the circumstances we have here—a request to terminate a trial
before institution due to settlement of the parties.
Rule 42.73(b) is another Board Rule that has been applied to
terminations, but does not apply here. Rule 42.73(b) authorizes the Board to
terminate a proceeding by rendering a “judgment.” Specifically, 37 C.F.R.
§ 42.73(b) allows for a party to “request judgment against itself at any time
during a proceeding.” And the definition of “judgment,” according to the
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

7

Board’s rules, includes “a termination of a proceeding.” Id. § 42.2. Thus,
under Rule 42.73(b), the Board may enter a final order granting a party’s
request to dismiss a Petition, which the Board construes as a request for a
termination. Neither party requests that we terminate this proceeding under
Rule 42.73(b)—and for good reason. The parties settled their dispute and
the Board has a settlement-specific rule: Rule 42.74—which the majority
interprets in a manner that (1) disregards anticompetitive concerns that have
been part of the history of contested cases at the USPTO for over 50 years;
(2) rewrites a Board rule that is not ambiguous; and (3) is inconsistent with a
substantial majority of the Board’s settlement-driven terminations pre-
institution to date.6
(1) Anticompetitive Concerns and Contested Cases at USPTO
The requirement to file the settlement agreement in contested cases at
the Board reflects a long-standing practice that goes back to interferences.
Johnston v. Beachy, Interference No. 104,286 (BPAI 2001) (Paper 200)

6 The parties or real parties-in-interest to this proceeding are aware (and
have notice) of the Board’s procedures regarding terminations due to
settlement pre-institution and the applicability of Rule 74 to those requests
for termination. See, e.g., Order on Joint Motion to Terminate, Samsung
Electronics America, Inc. v. Tactile Feedback Tech., IPR2016-00202 (PTAB
Feb. 23, 2016) (Paper 8) (terminating proceeding pre-institution, and
acknowledging the filing of the settlement agreement and granting the
motion to keep the agreement confidential and separate); Decision on Joint
Motion to Terminate, Telefonaktiebolaget LM Ericsson v. Cellular
Communications Equipment, IPR2016-01484 (PTAB Jan. 6, 2017) (Paper
11) (terminating proceeding pre-institution, and acknowledging the filing of
the settlement agreement and granting the request to keep the agreement
separate and confidential).
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

8

(precedential). The requirement to file settlement agreements began with the
enactment of Public Law 87-831, in 1962.7 Although the law was
subsequently amended, the essence of the filing requirement remained
largely unchanged, until 35 U.S.C. § 135(c), the settlement-agreement
provision in interferences, was replaced by the overhaul to Board
proceedings under the AIA.
The impetus for requiring settlement agreements in 1962 is
documented in the Congressional Record. In connection with the debate on
whether anticompetitive behavior in Board proceedings could be
investigated, Congress addressed the USPTO’s role as the depository of the
settlement agreements so that the Federal Trade Commission and the
Department of Justice would have easier access to documents germane to
investigations regarding violations of antitrust laws.8 The concerns at the
time were focused on settlements involving pharmaceuticals, but the
concerns were not unique to that industry. The documented concerns were
anticompetitive practices between rival private parties in which there would
be conditions to withdrawing from the contest, and further agreements
concerning identifying potential licensees and their royalty payments, not to
mention the restrictive provisions on selling and marketing activities of each

7 See Public Law 87-831—Oct. 15, 1962, https://www.govinfo.gov/content/
pkg/STATUTE-76/pdf/STATUTE-76-Pg958.pdf
8 See Congressional Record, Senate, October 6, 1962, 22041,
https://www.govinfo.gov/content/pkg/GPO-CRECB-1962-pt16/pdf/GPO-
CRECB-1962-pt16-5.pdf (debate on the drug bill that also included the
settlement filing requirement, which was broadened by the bill that became
§ 135(c)).
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

9

other.9 As I understand the history of the Board, the USPTO has
promulgated an AIA rule (discussed below) that gives effect to its long-
standing practice of requiring the filing of settlement agreements between
parties, regardless of whether the contested case is a “preliminary
proceeding” or a “trial” as defined in Rule 42.2.
(2) The Statute Versus the Board’s Rule
The governing statute requires filing of settlement agreements (and
collateral agreements referred to in those agreements) “made in connection
with, or in contemplation of, the termination of an inter partes review under
this section.” 35 U.S.C. § 317(b). Section 317 does not expressly govern
pre-institution settlement because it refers to “inter partes review.” See
Rules of Practice for Trials Before the Patent Trial and Appeal Board and
Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg.
48,612, 48,625 (Aug. 14, 2012) (stating that “35 U.S.C. 135(e), and 317, as
amended, and 35 U.S.C. 327 will govern settlements of Board trial
proceedings but do not expressly govern pre-institution settlement”).
Section 317, however, does not preclude the Board from requiring the filing
of pre-institution settlement agreements.
Indeed, I view the Board’s rule as expressly requiring the filing of
settlement agreements “between the parties made in connection with, or in
contemplation of, the termination of a proceeding.” 37 C.F.R. § 42.74(b).
The Board’s rules define “proceeding” as “a trial or preliminary
proceeding.” 37 C.F.R. § 42.2. The Rules further state that a “[p]reliminary

9 Id. at 22048.
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

10

[p]roceeding begins with the filing of a petition for instituting a trial and
ends with a written decision as to whether a trial will be instituted.” Id.
Therefore, I read Rule 42.74(b) as requiring parties who settle before the
Board issues an institution decision (i.e., during a “preliminary proceeding”)
to file the settlement agreement when seeking termination of that
proceeding.
The unopposed Motion and the majority place undue emphasis on a
phrase of Rule 42.74(b) without considering the full scope of “proceeding”
set forth in our Rules. The majority effectively rewrites Rule 42.74(b) to
read “any agreement or understanding between the parties made in
connection with, or in contemplation of, the termination of a trial [rather
than proceeding] shall be made in writing and a true copy shall be filed with
the Board before the termination of the trial.” This rewritten Rule would
transform a phrase addressing the timing of when to file the settlement
agreement (i.e., before the termination of the trial) into a phrase that also
places conditions on which agreements need to be filed (apparently only
those agreements that settle an instituted trial). The plain text of Rule
42.74(b) requires that all agreements made in connection with a proceeding
need to be filed, regardless of whether the Board has instituted trial. The
phrase “before the termination of the trial” places limits only on the latest
possible time at which the parties must file their settlement agreement. In
plain terms, the latest time at which a party can seek termination of a
proceeding because they have agreed to a settlement is before the end of the
trial. The timing of the filing, in my view, is not a “condition” limiting the
effect of Rule 42.74(b) only to the trial period—it simply requires that the
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

11

written agreement needs to be filed before we terminate, the latest of which
is before the proceeding ends.
Therefore, I respectfully disagree with my colleagues because I
conclude that Rule 42.74(b) requires the filing of all settlement agreements
made before we terminate a proceeding.
(3) Inconsistency at the Board
The Rule in question is a procedural rule that the USPTO promulgated
under its rulemaking authority in 2012. Since then, and until very recently,
the Board has consistently required the filing of pre-institution settlement
agreements in connection with termination requests. I could cite a robust
number of AIA proceedings that have been terminated since 2013—starting
as far as I know with IPR2013-00130—all of which were in the pre-
institution stage and were terminated due to settlement, and, thus, required
the filing of the settlement agreement. The majority decision runs contrary
to that consistent application of Rule 42.74(b) to date. Although recently, a
few panels have granted requests for termination before institution due to
settlement without requiring the parties to file the settlement agreement,
those decisions do not analyze Rule 42.74(b) or whether such a ruling is
consistent with our prior application of that Rule. Such deviations in our
procedural jurisprudence create inconsistency in our decision-making and
have the potential to confuse stakeholders and the public-at-large. Tasked,
however, with the mere application of the Rules to the facts of each case
(e.g., Administrative Patent Judges are not tasked to make policy for the
Board), I would prefer to handle this matter in a manner that is consistent
with our long-standing practice and the express language of Rule 42.74(b).
IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

12

And I am not aware of any policy or directive to the contrary. Therefore, I
remain a servant to the body of consistent application of the Rules and the
interpretation of the Rule as stated above.
Accordingly, I respectfully dissent from the majority’s decision
because I would terminate the proceeding only upon the filing of the written
settlement agreement.

IPR2021-00446, -00447, -00450, -00459, -00460, -00486, -00487, -00508,
-00509, -00536, -00537, -00539, -00567, -00568, -00569, -00587, -00588,
-00613, -00614, -00615, -00643, -00644, -00645, -00683, -00684, -00685,
-00729, -00730, -00731, -00732

13

FOR PETITIONER:

Todd Friedman
James Marina
Bao Nguyen
Kevin Bendix
Jon Carter
KIRKLAND & ELLIS LLP
todd.friedman@kirkland.com
james.marina@kirkland.com
bnguyen@kirkland.com
kevin.bendix@kirkland.com
carterj@kirkland.com

FOR PATENT OWNER:
Patrick McPherson
Patrick Muldoon
D. Joseph English
Paul H. Belnap
DUANE MORRIS LLP
pdmcpherson@duanemorris.com
pcmuldoon@duanemorris.com
djenglish@duanemorris.com
phbelnap@duanemorris.com