Ultravision Technologies, LLC

Patent Trials and Appeals Board

Dec 7, 2020

IPR2020-01173 (P.T.A.B. Dec. 7, 2020)

Trials@uspto.gov Paper 7
571-272-7822 Entered: December 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,
v.
ULTRAVISION TECHNOLOGIES, LLC,
Patent Owner.

IPR2020-01173
Patent 9,978,294 B1

Before DENISE M. POTHIER, SCOTT A. DANIELS, and
ROBERT L. KINDER, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

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

IPR2020-01173
Patent 9,978,294 B1
2
In a December 3, 2020 e-mail, the parties advised the Board that a
settlement agreement had been reached in this inter partes review
proceeding concerning U.S. Patent No. 9,978,294 B1. The parties requested
authorization to file a Joint Motion To Terminate this proceeding, together
with a Joint Request That The Settlement Agreement Be Treated As
Business Confidential Information pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74.
The parties may agree to settle any issue in a proceeding pursuant to a
written agreement, a copy of which shall be filed with the Board before
termination of the trial. 37 C.F.R. § 42.74(a)-(b). Any agreement or
understanding between the patent owner and a petitioner, including any
collateral agreements referred to in such agreement or understanding made
in connection with, or in contemplation of the termination shall be in writing
and a true copy of such agreement or understanding shall be filed in the
Office before the termination of such proceeding as between the parties.
35 U.S.C. § 317(b). Any such agreement should be filed as a separate
exhibit.
This matter is in the preliminary stage. Patent Owner filed a Patent
Owner Preliminary Response, but we have not rendered a decision whether
to institute a trial. The parties have identified co-pending litigation, which
they represent they have settled. Under these circumstances, it may be
appropriate to terminate the proceeding without rendering a final written
decision. 37 C.F.R. § 42.72.
The parties are authorized to file a Joint Motion To Terminate this
proceeding. The Joint Motion To Terminate must update the Board
concerning the status of any litigation or proceeding, including, but not
limited to proceedings in the U.S. Patent and Trademark Office, involving
IPR2020-01173
Patent 9,978,294 B1
3
the subject patent, and advise the Board whether any litigation or proceeding
involving the subject patent is contemplated in the foreseeable future. The
Joint Motion to Terminate also must include a copy of any agreement and
include a statement certifying that there are no collateral agreements or
understandings made in connection with, or in contemplation of, the
termination of the proceeding.
A party to a settlement may request that any written agreement be
treated as business confidential information and be kept separate from the
files of an involved patent. 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). The
request must be filed with the settlement. Id.
It is ORDERED that the parties are authorized to file a Joint Motion
To Terminate the proceeding and a Joint Request That The Settlement
Agreement Be Treated As Business Confidential Information.

IPR2020-01173
Patent 9,978,294 B1
4
FOR PETITIONER:
Scott A. McKeown
Alexander E. Middleton
Keyna Chow
ROPES & GRAY LLP
scott.mckeown@ropesgray.com
alexander.middleton@ropesgray.com
keyna.chow@ropesgray.com

FOR PATENT OWNER:
Peter Lambrianakos
Vincent J. Rubino
Joseph M. Mercadante
Enrique W. Iturralde
FABRICANT LLP
plambrianakos@fabricantllp.com
ffabricant@fabricantllp.com
vrubino@fabricantllp.com
jmercadante@fabricantllp.com
eiturralde@fabricantllp.com