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Trials@uspto.gov
`Tel: 571.272.7822
`
`Paper 9
`Entered: June 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`ZIILABS INC.,
`Patent Owner.
`
`Case IPR2015-00925 (Patent 6,683,615)1
`Case IPR2015-00926 (Patent 6,683,615)
`Case IPR2015-00927 (Patent7,050,061)
`Case IPR2015-00928 (Patent 7,710,425)
`Case IPR2015-00929 (Patent 7,710,425)
`Case IPR2015-00932 (Patent 7,187,383)
`
`
`
`
`
`
`
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Dismissing Petitions Pursuant to Settlement
`37 C.F.R. § 42.71(a)
`
`
`
`
`1 This Decision addresses the same issue in these six inter partes reviews.
`Therefore, we issue one Decision to be filed in all of the cases. The parties,
`however, are not authorized to use this style of filing in subsequent papers,
`without prior authorization.
`
`

`

`IPR2015-00925 and IPR2015-00926 (Patent 6,683,615);
`IPR2015-00928 and IPR2015-00929 (Patent 7,710,425);
`IPR2015-00927 (Patent7,050,061); IPR2015-00932 (Patent 7,187,383)
`
`On June 23, 2015, and pursuant to 35 U.S.C. § 317(a), the parties filed
`
`a joint motion to terminate in each of the following proceedings: IPR2015-
`
`00925, IPR2015-00926, IPR2015-00927, IPR2015-00928, IPR2015-00929,
`
`and IPR2015-00932 (“the settled IPRs”). See e.g., IPR2015-00925, Paper
`
`7.2 Along with the joint motion, the parties filed a Dismissal and Covenant
`
`Not to Sue (Ex. 1032, “settlement agreement”). The parties represent that
`
`the settlement agreement is a true copy and fully resolves all disputes and all
`
`Patent Office proceedings regarding U.S. Patent Nos. 6,683,615, 7,050,061,
`
`7,710,425, and 7,187,383 (“the settled patents”). Paper 7, 2–3. During a
`
`teleconference with the Board on June 29, 2015, the parties were advised of
`
`the provisions of 35 U.S.C. § 317(b), specifically that “[a]ny 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 of an inter partes
`
`review under this section shall be in writing and a true copy of such
`
`agreement or understanding shall be filed in the Office before the
`
`termination of the inter partes review as between the parties.” Both parties
`
`represented that the settlement agreement represents the whole agreement
`
`between the parties regarding termination of this proceeding and they do not
`
`have any collateral agreements.3 We accept the parties’ representations. In
`
`the joint motions, the parties also represent that the settlement agreement
`
`resolves all disputes regarding the settled patents pending in related case
`
`
`2 Unless otherwise noted, citations herein will be to IPR2015-00925.
`3 The parties also noted dismissal of a lawsuit in district court.
`See Exs. 1030, 1031.
`
`2
`
`

`

`IPR2015-00925 and IPR2015-00926 (Patent 6,683,615);
`IPR2015-00928 and IPR2015-00929 (Patent 7,710,425);
`IPR2015-00927 (Patent7,050,061); IPR2015-00932 (Patent 7,187,383)
`
`ZiiLabs Inc., Ltd. v. Samsung Electronics Co. Ltd., Case No. 2:14-cv-0203
`
`(E.D. Tex.). Id.
`
`These proceedings are at an early stage. In each of the proceedings,
`
`Patent Owner has not yet filed a Preliminary Response and we have not yet
`
`instituted a trial. In view of the early stage of these proceedings, and the
`
`concurrent settlement of the disputes regarding the settled patents pending in
`
`the district court lawsuit, we determine that it is appropriate to dismiss the
`
`Petitions and terminate the proceedings with respect to both parties. See 37
`
`C.F.R. § 42.71(a). Therefore, the joint motions to terminate the proceedings
`
`are granted. This paper does not constitute a final written decision pursuant
`
`to 35 U.S.C. § 318(a).
`
`The parties also filed in each case 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(c). See e.g., IPR2015-00925,
`
`Paper 8.
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that the parties’ joint request in each proceeding that the
`
`settlement agreement be treated as business confidential information, to be
`
`kept separate from the patent file is granted;
`
`FURTHER ORDERED that the Petitions in each of the IPR2015-
`
`00925, IPR2015-00926, IPR2015-00927, IPR2015-00928, IPR2015-00929,
`
`and IPR2015-00932 proceedings are dismissed; and
`
`FURTHER ORDERED that the joint motions to terminate in each of
`
`the IPR2015-00925, IPR2015-00926, IPR2015-00927, IPR2015-00928,
`
`3
`
`

`

`IPR2015-00925 and IPR2015-00926 (Patent 6,683,615);
`IPR2015-00928 and IPR2015-00929 (Patent 7,710,425);
`IPR2015-00927 (Patent7,050,061); IPR2015-00932 (Patent 7,187,383)
`
`IPR2015-00929, and IPR2015-00932 proceedings are granted and each of
`
`the proceedings is terminated with respect to both Petitioner and Patent
`
`Owner.
`
`
`
`
`
`4
`
`

`

`IPR2015-00925 and IPR2015-00926 (Patent 6,683,615);
`IPR2015-00928 and IPR2015-00929 (Patent 7,710,425);
`IPR2015-00927 (Patent7,050,061); IPR2015-00932 (Patent 7,187,383)
`
`
`
`for PETITIONER:
`
`Jeffrey P. Kushan
`Michael D. Hatcher
`Sidley Austin LLP
`iprnotices@sidley.com
`
`for PATENT OWNER:
`
`Steven G. Spears
`Leigh J. Martinson
`McDermott Will & Emery LLP
`sspears@mwe.com
`Lmartinson@mwe.com
`
`Russell Swerdon
`Creative Labs, Inc.
`russ_swerdon@creativelabs.com
`
`5
`
`

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