`Tel: 571.272.7822
`
`Paper 12
`Entered: January 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`ZIILABS INC.,
`Patent Owner.
`
`Case IPR2015-00931
`Patent 5,835,096
`
`
`
`
`
`
`
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`DECISION
`Granting Joint Motion to Terminate
`35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72, 42.74
`
`
`
`On November 16, 2015, and pursuant to 35 U.S.C. § 317(a), the
`
`parties filed a joint motion to terminate IPR2015-00931. Paper 10. Along
`
`with the joint motion, the parties filed a Settlement and License Agreement
`
`(Ex. 1025, “settlement agreement”). The parties represent that they fully
`
`resolved all disputes regarding U.S. Patent No. 5,835,096 (“the ’096 Patent”)
`
`“via a written agreement.” Paper 10, 2 (citing Ex. 1025, 1–12). The parties
`
`
`
`IPR2015-00931
`Patent 5,835,096
`
`note, in particular, that their resolution of disputes regarding the ’096 Patent
`
`includes this proceeding and disputes between the parties pending in related
`
`case ZiiLabs Inc., Ltd. v. Samsung Electronics Co. Ltd., Case No. 2:14-cv-
`
`0203 (E.D. Tex.). Id. at 2–3. Id. The parties further represent that Exhibit
`
`1025 is a true and correct copy of the aforementioned “written agreement.”
`
`Id.
`
`This proceeding is at an early stage in that Patent Owner has not yet
`
`filed a Patent Owner Response. In view of the early stage of this
`
`proceeding, and the concurrent settlement of the dispute between the parties
`
`regarding the ’096 Patent pending in the district court lawsuit, we determine
`
`that it is appropriate to terminate the proceeding with respect to both parties.
`
`See 37 C.F.R. § 42.72. Therefore, the joint motion to terminate this
`
`proceeding is 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). Paper 11. We grant the parties’
`
`request.
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that the parties’ joint request that the settlement
`
`agreement be treated as business confidential information, to be kept
`
`separate from the patent file, is granted; and
`
`FURTHER ORDERED that the joint motion to terminate IPR2015-
`
`00931 is granted, and this inter partes review is hereby terminated.
`
`
`
`
`
`2
`
`
`
`IPR2015-00931
`Patent 5,835,096
`
`
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Mark A. Dodd
`Michael D. Hatcher
`Sidley Austin LLP
`jkushan@sidley.com
`mdodd@sidley.com
`mhatcher@sidley.com
`
`PATENT OWNER:
`
`Andy Chan
`George Haight
`William Belanger
`Andrew Schultz
`Pepper Hamilton LLP
`chana@pepperlaw.com
`haightg@pepperlaw.com
`belangew@pepperlaw.com
`schultza@pepperlaw.com
`
`Russell Swerdon
`Desmund Gean
`Creative Labs, Inc. (Legal Department)
`Russ_swerdon@creativelabs.com
`Desmund_gean@creativelabs.com
`
`3
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