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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
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`APPLE INC.,
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`Petitioner
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`v.
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`MAXELL, LTD.,
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`Patent Owner
`___________
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`Case No. IPR2020-00200
`U.S. Patent No. 10,084,991
` ____________
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` JOINT MOTION TO TERMINATE
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,084,991
`UNDER 37 C.F.R. § 42.72
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`I.
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`INTRODUCTION
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`Inter Partes Review IPR2020-00200
`U.S. Patent No. 10,084,991
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`Pursuant to 37 C.F.R. § 42.71(a), Petitioner Apple Inc. and Patent Owner
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`Maxell, Ltd. jointly request termination of the petition for Inter Partes Review of
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`U.S. Patent No. 10,084,991 (“the ’991 Patent”) in IPR2020-00200. On April 8, 2021,
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`the Parties informed the Board of a settlement agreement between Petitioner and
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`Patent Owner via e-mail and requested authorization to file a Joint Motion to
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`Terminate the Petition with respect to both the Patent Owner and Petitioner. As set
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`forth in an e-mail dated April 8, 2021, the Board authorized the filing of the
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`requested Joint Motion to Terminate this Petition. Accordingly, Petitioner and Patent
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`Owner jointly request termination of the present proceeding.
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`II. ARGUMENT
`A joint motion to terminate generally must “(1) include a brief explanation as
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`to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office; and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
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`28, 2014).
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`Inter Partes Review IPR2020-00200
`U.S. Patent No. 10,084,991
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`Brief Explanation as to Why Termination Is Appropriate
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`A.
`Petitioner and Patent Owner have entered into a written confidential
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`settlement agreement that fully resolves this matter. The Parties are concurrently
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`filing a copy of the settlement agreement as Exhibit 1055 along with a request to
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`treat it as confidential business information pursuant to 35 U.S.C. § 317(b). Pursuant
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`to 37 C.F.R. § 42.74(b), the Parties acknowledge that, as of the filing of this Motion
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`and the concurrent Motion to Keep Confidential, that Exhibit 1055 represents the
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`entire agreement or understanding between the Parties made in connection with, or
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`in contemplation of, the termination of this proceeding, and further, that Exhibit
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`1055 is a true and accurate copy of the agreement between the Parties that resolves
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`the present proceeding. The Parties agree that neither Patent Owner nor Petitioner
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`will be prejudiced by termination of this proceeding.
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`The parties “may terminate the proceeding…unless the Board has already
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`decided the merits of the proceeding.” Consolidated Office Patent Trial Practice
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`Guide, 4 (November 2019). The parties have now settled their dispute and have
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`reached agreement to terminate the Petition. The USPTO can conserve its resources
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`through terminating now, removing the need for the Board to further consider the
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`arguments and to issue a Final Written Decision.
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`Termination is appropriate because public policy favors terminating the
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`present petition for inter partes review. Congress and federal courts have expressed
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`2
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`a strong interest in encouraging settlement in litigation. Delta Air Lines, Inc. v.
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`Inter Partes Review IPR2020-00200
`U.S. Patent No. 10,084,991
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`August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to
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`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575,
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`1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S.
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`950 (1986). The Federal Circuit places a particularly strong emphasis on settlement.
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`Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting
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`that the law favors settlement to reduce antagonism and hostility between parties).
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`The Board’s Trial Practice Guide stresses that “[t]here are strong public policy
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`reasons to favor settlement between the parties to a proceeding.” Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Ending this petition for IPR promotes the Congressional goal of establishing
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`a more efficient patent system by limiting unnecessary and counterproductive costs.
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`See Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
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`Proceedings, and Transitional Program for Covered Business Method Patents, 77
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`Fed. Reg. 48,680 (Aug. 14, 2012).
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`Identification of Parties and Status of Litigation
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`B.
`This petition for Inter Partes Review is related to the following lawsuit, which
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`has been dismissed: Apple Inc. in Maxell, Ltd. v. Apple Inc.¸ No. 5:19-cv-00036
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`(E.D. Tex. March 15, 2019).
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`3
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`Inter Partes Review IPR2020-00200
`U.S. Patent No. 10,084,991
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`Identification and Status of Related Proceedings Before the USPTO
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`C.
`Petitioner has not filed any further Petition for Inter Partes Review related to
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`the ’991 Patent.
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`III. CONCLUSION
`For the reasons set forth above, the parties respectfully request termination of
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`the petition for Inter Partes Review of U.S. Patent No. 10,084,991 (IPR2020-
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`00200).
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`Respectfully submitted,
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`BY: /s/ Adam P. Seitz
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`Adam P. Seitz, Reg. No. 52,206
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`COUNSEL FOR PETITIONER
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`BY: /s/ Robert G. Pluta
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`Robert G. Pluta, Reg. No. 50,970
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`COUNSEL FOR PATENT OWNER
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`4
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`Inter Partes Review IPR2020-00200
`U.S. Patent No. 10,084,991
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on April 13,
`2021, the foregoing JOINT MOTION TO TERMINATE THE PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,084,991 UNDER 37 C.F.R.
`§ 42.71(a) was served via electronic filing with the Board and via Electronic Mail
`on the following counsel of record for Patent Owner:
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`Robert G. Pluta (rpluta@mayerbrown.com)
`Maxell-Apple-Service@mayerbrown.com
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`BY: /s/ Adam P. Seitz
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`Adam P. Seitz, Reg. No. 52,206
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`COUNSEL FOR PETITIONER
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`5
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