`Paper No. 64
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`____________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`Patent Owner Corephotonics, Ltd. (“Corephotonics”) and Petitioner
`
`Apple Inc. (“Apple”) have reached a settlement. Pursuant to 35 U.S.C.
`
`§ 317(a) and 37 C.F.R. §§ 42.72 and 42.74, the parties jointly request
`
`termination of the inter partes review of U.S. Patent No. 10,225,479 (“Patent-
`
`in-Suit”), Case No. IPR2020-00906. The parties were authorized to file this
`
`Joint Motion by the Board via email on February 29, 2024.
`
`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true
`
`copy of the settlement agreement that resolves the disputes in the above-
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`captioned inter partes review is filed herewith as Exhibit 2203.1 There are no
`
`other collateral agreements between the parties made in connection with, or
`
`in contemplation of, the termination sought.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Corephotonics
`
`and Apple are concurrently filing a Joint Request to Keep Separate, which
`
`asks the Board to treat the settlement agreement as business confidential
`
`information, and to keep it separate from the files of this proceeding and the
`
`files of the Patent-in-Suit.
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Corephotonics and Apple jointly request that the Board terminate
`
`IPR2020-00906 in its entirety.
`
`II. REASONS WHY TERMINATION IS APPROPRAITE
`
`Termination of IPR2020-00906 in its entirety is appropriate. Apple is the
`
`only Petitioner in IPR2020-00906. Apple no longer intends to participate in
`
`this IPR, so IPR2020-00906 should be terminated. The lawsuit between
`
`Corephotonics and Apple involving the Patent-at-Issue has been dismissed.
`
`III. CONCLUSION
`
`Corephotonics and Apple have settled the disputes in the above-
`
`captioned inter partes review relating to the Patent-at-Issue. This Board’s final
`
`
`1 Payment dollar amounts and bank account details have been redacted.
`
`2
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`written decision in this proceeding was vacated by the Federal Circuit and the
`
`proceeding remanded to the Board. This Board has not decided the merits or
`
`entered a final written decision following that remand. Accordingly,
`
`Corephotonics and Apple request that the Board terminate IPR2020-00906 in
`
`its entirety.
`
`
`
`Dated: March 6, 2024
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`nrubin@raklaw.com
`
`Attorneys for Patent Owner,
`COREPHOTONICS, LTD.
`
`
`
`
`
`
`
` /David W. OBrien/
`David W. O’Brien (Reg. No. 40,107)
`HAYNES AND BOONE, LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Telephone: 512-867-8400
`david.obrien.ipr@haynesboone.com
`
`Attorneys for Petitioner,
`APPLE INC.
`
`3
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`CERTIFICATE OF SERVICE
`
`I hereby certify that “Joint Motion to Terminate Proceeding” was served on
`
`March 6, 2024 by email sent to:
`
`David W. O’Brien
`Hong Shi
`HAYNES AND BOONE, LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Telephone: 512-867-8400
`Email: david.obrien.ipr@haynesboone.com
`Email: hong.shi.ipr@haynesboone.com
`
`Andrew S. Ehmke
`Jordan Maucotel
`Stephanie N. Sivinski
`HAYNES AND BOONE, LLP
`2801 N. Harwood St., Suite 2300
`Dallas, TX 75201
`Telephone: 214-651-5000
`Email: andy.ehmke.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`Email: stephanie.sivinski.ipr@haynesboone.com
`
` /Neil A. Rubin/
`
`
`
`
`4
`
`
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