`U.S. Patent No. 8,023,580
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00034
`
`U.S. Patent No. 8,023,580
`
`____________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 37 C.F.R. § 42.71 and 35 U.S.C. § 317
`
`
`
`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`Pursuant to 37 C.F.R. § 42.71(a) and 35 U.S.C. § 317(a), Petitioner Apple Inc.
`
`(“Petitioner”) and Patent Owner Rembrandt Wireless Technologies, L.P. (“Patent
`
`Owner”) jointly move the Patent Trial and Appeal Board (“Board”) to terminate the
`
`following Inter Partes Review Proceeding in its entirety:
`
`IPR Case No.
`
`Patent No.
`
`IPR2020-00034
`
`8,023,580
`
`
`
`The parties notified the Patent and Trial Appeal Board of the parties’
`
`settlement on March 23, 2020 and received authorization to file this Motion to
`
`Terminate on the same day. In support of the Motion to Terminate Proceeding, the
`
`parties state as follows:
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner and Patent
`
`Owner have filed herewith a true copy of the confidential settlement agreement.
`
`There are no collateral agreements. Because the settlement agreement is
`
`confidential, the parties respectfully request that it be treated as business confidential
`
`information, be kept separate from the underlying patent file, and be made available
`
`only as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`This inter partes review has not been instituted. Petitioner filed its petition
`
`for inter partes review on November 5, 2019, Patent Owner filed a preliminary
`
`1
`
`
`
`
`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`response on February 13, 2020, Petitioner filed a reply to the preliminary response
`
`on March 4, 2020, and Patent Owner filed a sur-reply on March 9, 2020.
`
`The parties have settled their dispute and the parties to the district court
`
`litigation have filed a joint motion to dismiss the suit as to all claims of U.S. Patent
`
`No. 8,023,580 (Rembrandt Wireless Technologies, LP v. Apple Inc., 2:19-cv-00025
`
`(E.D. Tex.)). The suit has now been dismissed. The parties also agreed to terminate
`
`this inter partes review. The parties also agreed to terminate a second inter partes
`
`review proceeding relating to the same patent, namely IPR2020-00033, and are
`
`simultaneously filing a corresponding motion in that case. The parties’ Settlement
`
`Agreement has been made in writing, and a true and correct copy shall be filed with
`
`this Office as business confidential information pursuant to 35 U.S.C. § 317(b) and
`
`37 C.F.R. § 42.74(c).
`
`Wherefore, Petitioner and Patent Owner respectfully request that the Board
`
`grant the parties’ Joint Motion to Terminate Case Number IPR2020-00034 in its
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`entirety and grant the request to treat the settlement agreement between the parties
`
`as business confidential information.
`
`Petitioner and Patent Owner are available at the Board’s convenience to
`
`discuss these related matters in more detail or answer any additional questions raised
`
`by this joint motion.
`
`Respectfully submitted,
`
`2
`
`
`
`
`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`
`Dated: March 27, 2020
`
`
`
`
`Attorneys for APPLE INC.
`
`By: _/Mark D. Rowland/________________________
`
`Mark D. Rowland (Reg. No. 32,077) (Lead)
`
`Gabrielle E. Higgins (Reg. No. 38,916) (Back-up)
`ROPES & GRAY LLP
`
`1900 University Avenue, 6th Floor
`
`
`East Palo Alto, CA 94303-2284
`
`Phone: 650-617-4000
`
`Fax: 617-235-9492
`mark.rowland@ropesgray.com
`
`
`gabrielle.higgins@ropesgray.com
`
`
`
`
`
`Dated: March 27, 2020 By: __/Jason Shapiro/_________________________
`
`Jason Shapiro (Reg. No. 35,354) (Lead)
`
`Mark J. DeBoy (Reg. No. 66,983) (Back-up)
`EDELL, SHAPIRO AND FINNAN, LLC
`
`
`9801 Washingtonian Boulevard, Suite 750
`
`Gaithersburg, Maryland 20878
`
`Phone: (301) 424-3640
`
`Fax: (301) 762-4056
`
`js@usiplaw.com
`
`mjd@usiplaw.com
`
`
`
`Attorneys for REMBRANDT WIRELESS
`
`TECHNOLOGIES, LP
`
`
`3
`
`
`
`
`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing JOINT MOTION TO
`
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 was served in its
`
`entirety by causing the aforementioned document to be electronically mailed,
`
`pursuant to the parties’ agreement to the following attorneys of record for the Patent
`
`Owner listed below:
`
`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
`
`Nancy Linck
`646 Westbourne Street
`La Jolla, CA 92037
`nancylinck@outlook.com
`Tel: (858) 255-8043
`
`Counsel for Patent Owner Rembrandt Wireless Technologies, LP
`
`
`
`
`
`
`
`Dated: March 30, 2020
`
`
`
`
`
`
`
`ROPES & GRAY LLP
`
`
`By: /Crena Pacheco/
`Name: Crena Pacheco
`
`
`
`
`
`
`
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