throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 35
`Entered: April 20, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MAXELL, LTD.,
`Patent Owner.
`
`
`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00200 (Patent 10,084,991 B2)
`IPR2020-00202 (Patent 10,212,586 B2)
`IPR2020-00204 (Patent 6,928,306 B2)1
`
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, MINN CHUNG, KEVIN C. TROCK, and
`JOHN A. HUDALLA, Administrative Patent Judges.2
`HUDALLA, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 This Order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this filing style in subsequent papers.
`2 This is not an expanded panel decision. Judges Chung, Trock, and Hudalla
`are the panel in IPR2020-00199. Judges Zecher, Trock, and Hudalla are the
`panel in IPR2020-00200, -00202, and -00204.
`
`

`

`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00200 (Patent 10,084,991 B2)
`IPR2020-00202 (Patent 10,212,586 B2)
`IPR2020-00204 (Patent 6,928,306 B2)
`
`
`INTRODUCTION
`I.
`With our authorization, Petitioner and Patent Owner (collectively,
`“the Parties”) filed a Joint Motion to Terminate in each of the above-
`captioned proceedings due to settlement (“Joint Motions”). Paper 27.3 In
`support of the Joint Motions, the Parties filed copies of a Confidential
`Settlement and License Agreement, Ex. 1052 (“Settlement Agreement”),4 as
`well as corresponding Joint Requests to Keep the Settlement Agreement
`Confidential and Separate pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), Paper 28 (“Joint Requests”).
`
`
`II. DISCUSSION
`In the Joint Motions, the Parties represent that the Settlement
`Agreement fully resolves the above-captioned inter partes review
`proceedings. Joint Motions 2. The Parties also represent that they have filed
`true and accurate copies of the Settlement Agreement and that the Settlement
`Agreement represents the entire agreement between the Parties. Id. The
`Parties further represent that the related district court case (Maxell, Ltd. v.
`Apple Inc.¸ No. 5:19-cv-00036 (E.D. Tex. filed Mar. 15, 2019)) has been
`dismissed. Id. at 3. Accordingly, the Parties jointly request termination of
`these proceedings. Id. at 4.
`
`3 For purposes of expediency, we cite to papers filed in IPR2020-00199,
`unless otherwise noted. The Parties filed similar papers in each of the
`above-identified proceedings.
`4 For purposes of expediency, we cite to the copy of the Settlement
`Agreement filed in IPR2020-00199. The Parties filed the same Settlement
`Agreement in each of the above-identified proceedings.
`2
`
`
`
`

`

`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00200 (Patent 10,084,991 B2)
`IPR2020-00202 (Patent 10,212,586 B2)
`IPR2020-00204 (Patent 6,928,306 B2)
`
`
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)5;
`see 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Although we have instituted
`inter partes review of the challenged patents in these proceedings, we have
`not yet decided the merits of these proceedings. Therefore, we determine
`that it is appropriate to terminate these proceedings without rendering any
`further decisions.
`In the Joint Requests, the Parties request to have the Settlement
`Agreement treated as business confidential information and to keep it
`separate from the files of the respective patents involved in these inter partes
`proceedings. Joint Requests 1. After reviewing the Settlement Agreement
`between Petitioner and Patent Owner, we find that it contains confidential
`business information regarding the terms of settlement. We determine that
`good cause exists to treat the Settlement Agreement between Petitioner and
`Patent Owner as business confidential information pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`
`
`
`
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`

`

`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00200 (Patent 10,084,991 B2)
`IPR2020-00202 (Patent 10,212,586 B2)
`IPR2020-00204 (Patent 6,928,306 B2)
`
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is
`ORDERED that the Joint Motions to Terminate are granted, and the
`above-identified proceedings are terminated; and
`
`FURTHER ORDERED that the Joint Requests to Keep the Settlement
`Agreement Confidential and Separate are granted, and the Settlement
`Agreement shall be kept separate from the files of U.S. Patent Nos.
`6,329,794 B1, 10,084,991 B2, 10,212,586 B2, and 6,928,306 B2, and made
`available only to Federal Government agencies on written request, or to any
`person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`4
`
`

`

`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00200 (Patent 10,084,991 B2)
`IPR2020-00202 (Patent 10,212,586 B2)
`IPR2020-00204 (Patent 6,928,306 B2)
`
`PETITIONER:
`Jennifer C. Bailey
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`PATENT OWNER:
`Robert G. Pluta
`Amanda S. Bonner
`Luiz Miranda
`James A. Fussell
`William J. Barrow
`Saqib J. Siddiqui
`Mayer Brown LLP
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`lmiranda@mayerbrown.com
`jfussell@mayerbrown.com
`wbarrow@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`
`
`
`5
`
`

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