Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 67
`Entered: March 21, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`
`
`IPR2020-00487 (Patent 9,661,233 B2)
` IPR2020-00860 (Patent 10,326,942 B2)
` IPR2020-00861 (Patent 10,230,898 B2)
` IPR2020-00862 (Patent 10,356,332 B2)
` IPR2020-00906 (Patent 10,225,479 B2) 1
`
`
`
`
`
`
`
`
`
`
`
`Before GREGG I. ANDERSON, JOHN F. HORVATH,
`MONICA S. ULLAGADDI, SCOTT B. HOWARD, JOHN R. KENNY, and
`BRENT M. DOUGAL, Administrative Patent Judges.2
`
`PER CURIAM.
`
`
`
`
`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 each of these proceedings.
`We issue one Order to be entered in each proceeding. The parties are not
`authorized to use this style caption unless later permitted.
`2 This listing of Administrative Patent Judges does not represent an
`expanded panel for any of the above-identified proceedings.
`
`
`571-272-7822
`
`
`
`
`Paper 67
`Entered: March 21, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`
`
`IPR2020-00487 (Patent 9,661,233 B2)
` IPR2020-00860 (Patent 10,326,942 B2)
` IPR2020-00861 (Patent 10,230,898 B2)
` IPR2020-00862 (Patent 10,356,332 B2)
` IPR2020-00906 (Patent 10,225,479 B2) 1
`
`
`
`
`
`
`
`
`
`
`
`Before GREGG I. ANDERSON, JOHN F. HORVATH,
`MONICA S. ULLAGADDI, SCOTT B. HOWARD, JOHN R. KENNY, and
`BRENT M. DOUGAL, Administrative Patent Judges.2
`
`PER CURIAM.
`
`
`
`
`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 each of these proceedings.
`We issue one Order to be entered in each proceeding. The parties are not
`authorized to use this style caption unless later permitted.
`2 This listing of Administrative Patent Judges does not represent an
`expanded panel for any of the above-identified proceedings.
`
`
`
`IPR2020-00487 (Patent 9,661,233 B2)
`IPR2020-00860 (Patent 10,326,942 B2)
`IPR2020-00861 (Patent 10,230,898 B2)
`IPR2020-00862 (Patent 10,356,332 B2)
`IPR2020-00906 (Patent 10,225,479 B2)
`
`
`I. INTRODUCTION
`
`On March 6, 2024, with the Board’s authorization, Petitioner and
`Patent Owner (collectively referred to as “the Parties”) filed a Joint Motion
`to Terminate Proceeding (“Joint Motion”) (Paper 643), as well as a Joint
`Request to Keep Separate (“Joint Request”) (Paper 65), in each of the above-
`identified proceedings due to settlement. In support of the Joint Requests,
`the Parties filed a copy of a Settlement, Disbursement and License
`Agreement (“Agreement”) (Ex. 2105) in each proceeding.
`
`II. DISCUSSION
`
`In the Joint Motions, the Parties represent, for each of the above-
`identified proceedings, that “Apple no longer intends to participate in this
`IPR,” and that “[t]he lawsuit between Corephotonics and Apple involving
`the Patent-at-Issue has been dismissed.” Paper 64, 2. The Parties further
`represent, for each proceeding, that the Agreement is “a true copy of the
`settlement agreement that resolves the disputes,” and that “[t]here are no
`other collateral agreements between the parties made in connection with, or
`in contemplation of, the termination sought.” Id. at 1–2.
`The parties originally filed an Agreement in which the settlement
`amount was redacted. Ex. 2105, 7. In an email dated March 14, 2024, we
`requested the parties to file an unredacted agreement. Ex. 3003, 2. The
`parties subsequently filed the unredacted Agreement. Ex. 2106; see id. at 7.
`
`
`3 For expediency, we cite to papers in IPR2020-00487. Similar papers were
`filed in the other proceedings identified above.
`
`2
`
`
`
`IPR2020-00487 (Patent 9,661,233 B2)
`IPR2020-00860 (Patent 10,326,942 B2)
`IPR2020-00861 (Patent 10,230,898 B2)
`IPR2020-00862 (Patent 10,356,332 B2)
`IPR2020-00906 (Patent 10,225,479 B2)
`
`In our email, we also requested clarification as to whether all agreements
`ancillary to the settlement agreement had been filed––the parties responded
`in the affirmative. Ex. 3003, 1–2.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is
`filed.” Section 35 U.S.C. § 317(a) also provides that if no petitioner remains
`in the inter partes review, the Office may terminate the review.
`These proceedings are now on remand from the U.S. Court of Appeals
`for the Federal Circuit. Although the Parties have filed respective briefs on
`remand in each proceeding, we have not yet decided the merits, and the
`Parties have adequately shown that termination of the proceedings is
`appropriate. Under these circumstances, we determine that good cause
`exists to terminate the proceedings with respect to the Parties.
`In the Joint Requests, the Parties request to file the Agreement “as
`business confidential information which shall be kept separate from the file
`of the involved patent” in each proceeding. Paper 65, 1. After review, we
`find that the Agreement contains business confidential information regarding
`the terms of settlement. We determine that good cause exists to treat the
`Agreement 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).
`
`3
`
`
`
`IPR2020-00487 (Patent 9,661,233 B2)
`IPR2020-00860 (Patent 10,326,942 B2)
`IPR2020-00861 (Patent 10,230,898 B2)
`IPR2020-00862 (Patent 10,356,332 B2)
`IPR2020-00906 (Patent 10,225,479 B2)
`
`
`III. ORDER
`
`Accordingly, for the reasons discussed above, it is:
`
`ORDERED that the Joint Motions are granted, and IPR2020-00487,
`IPR2020-00860, IPR2020-00861, IPR2020-00862, and IPR2020-
`00906 are terminated with respect to Petitioner and Patent Owner pursuant
`to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`FURTHER ORDERED that the Joint Requests are granted, and the
`Agreement shall be kept separate from the files of Patents 9,661,233 B2,
`10,326,942 B2, 10,230,898 B2, 10,356,332 B2, and 10,225,479 B2, and be
`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
`
`
`
`IPR2020-00487 (Patent 9,661,233 B2)
`IPR2020-00860 (Patent 10,326,942 B2)
`IPR2020-00861 (Patent 10,230,898 B2)
`IPR2020-00862 (Patent 10,356,332 B2)
`IPR2020-00906 (Patent 10,225,479 B2)
`
`FOR PETITIONER:
`
`David O’Brien
`Andrew Ehmke
`Hong Shi
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`hong.shi.ipr@haynesboone.com
`
`
`FOR PATENT OWNER:
`
`Neil Rubin
`C. Jay Chung
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`
`5
`
`
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