`U.S. Patent No. 8,023,580
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC.,
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`Petitioner,
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`v.
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`REMBRANDT WIRELESS TECHNOLOGIES, LP,
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`Patent Owner.
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`____________
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`Case IPR2020-00033
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`U.S. Patent No. 8,023,580
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`____________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 37 C.F.R. § 42.71 and 35 U.S.C. § 317
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`Pursuant to 37 C.F.R. § 42.71(a) and 35 U.S.C. § 317(a), Petitioner Apple Inc.
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`(“Petitioner”) and Patent Owner Rembrandt Wireless Technologies, L.P. (“Patent
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`Owner”) jointly move the Patent Trial and Appeal Board (“Board”) to terminate the
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`following Inter Partes Review Proceeding in its entirety:
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`IPR Case No.
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`Patent No.
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`IPR2020-00033
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`8,023,580
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`The parties notified the Patent and Trial Appeal Board of the parties’
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`settlement on March 23, 2020 and received authorization to file this Motion to
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`Terminate on the same day. In support of the Motion to Terminate Proceeding, the
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`parties state as follows:
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner and Patent
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`Owner have filed herewith a true copy of the confidential settlement agreement.
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`There are no collateral agreements. Because the settlement agreement is
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`confidential, the parties respectfully request that it be treated as business confidential
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`information, be kept separate from the underlying patent file, and be made available
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`only as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`This inter partes review has not been instituted. Petitioner filed its petition
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`for inter partes review on November 5, 2019, Patent Owner filed a preliminary
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`response on February 13, 2020, Petitioner filed a reply to the preliminary response
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`on March 4, 2020, and Patent Owner filed a sur-reply on March 9, 2020.
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`The parties have settled their dispute and the parties to the district court
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`litigation have filed a joint motion to dismiss the suit as to all claims of U.S. Patent
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`No. 8,023,580 (Rembrandt Wireless Technologies, LP v. Apple Inc., 2:19-cv-00025
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`(E.D. Tex.)). The suit has now been dismissed. The parties also agreed to terminate
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`this inter partes review. The parties also agreed to terminate a second inter partes
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`review proceeding relating to the same patent, namely IPR2020-00034, and are
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`simultaneously filing a corresponding motion in that case. The parties’ Settlement
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`Agreement has been made in writing, and a true and correct copy shall be filed with
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`this Office as business confidential information pursuant to 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c).
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`Wherefore, Petitioner and Patent Owner respectfully request that the Board
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`grant the parties’ Joint Motion to Terminate Case Number IPR2020-00033 in its
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`entirety and grant the request to treat the settlement agreement between the parties
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`as business confidential information.
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`Petitioner and Patent Owner are available at the Board’s convenience to
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`discuss these related matters in more detail or answer any additional questions raised
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`by this joint motion.
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`Respectfully submitted,
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`Dated: March 27, 2020
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`Attorneys for APPLE INC.
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`By: __/Mark D. Rowland/_____________________
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`Mark D. Rowland (Reg. No. 32,077) (Lead)
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`Gabrielle E. Higgins (Reg. No. 38,916) (Back-up)
`ROPES & GRAY LLP
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`1900 University Avenue, 6th Floor
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`East Palo Alto, CA 94303-2284
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`Phone: 650-617-4000
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`Fax: 617-235-9492
`mark.rowland@ropesgray.com
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`gabrielle.higgins@ropesgray.com
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`
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`Dated: March 27, 2020 By: __/Jason Shapiro/_________________________
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`Jason Shapiro (Reg. No. 35,354) (Lead)
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`Mark J. DeBoy (Reg. No. 66,983) (Back-up)
`EDELL, SHAPIRO AND FINNAN, LLC
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`9801 Washingtonian Boulevard, Suite 750
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`Gaithersburg, Maryland 20878
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`Phone: (301) 424-3640
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`Fax: (301) 762-4056
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`js@usiplaw.com
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`mjd@usiplaw.com
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`Attorneys for REMBRANDT WIRELESS
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`TECHNOLOGIES, LP
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing JOINT MOTION TO
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`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 was served in its
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`entirety by causing the aforementioned document to be electronically mailed,
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`pursuant to the parties’ agreement to the following attorneys of record for the Patent
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`Owner listed below:
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`Jason Shapiro
`Mark J. DeBoy
`Edell, Shapiro and Finnan, LLC
`9801 Washingtonian Boulevard
`Suite 750
`Gaithersburg, Maryland 20878
`js@usiplaw.com
`mjd@usiplaw.com
`Tel: (301) 424-3640
`Fax: (301) 762-4056
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`Nancy Linck
`646 Westbourne Street
`La Jolla, CA 92037
`nancylinck@outlook.com
`Tel: (858) 255-8043
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`Counsel for Patent Owner Rembrandt Wireless Technologies, LP
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`Dated: March 30, 2020
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`ROPES & GRAY LLP
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`By: /Crena Pacheco/
`Name: Crena Pacheco
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