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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.,
`Petitioner,
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`v.
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`SOLAS OLED, LTD.,
`Patent Owner.
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`Case No. IPR2020-01546
`U.S. Patent No. 7,573,068
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`JOINT MOTION TO TERMINATE
`IPR BEFORE INSTITUTION
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`Case No. IPR2020-01546
`U.S. Patent No. 7,573,068
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`Patent Owner Solas OLED, Ltd. and Petitioner Apple Inc. have reached a
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`settlement. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, the
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`parties jointly request termination of the inter partes review of U.S. Patent No.
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`7,573,068 (“Patent-in-Suit”), Case IPR2020-01546. The parties were authorized to
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`file this Joint Motion by the Board (via email) on February 1, 2021.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy
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`of the settlement agreement (Agreement) that resolves the disputes in the above-
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`captioned inter partes review relating to the Patent-in-Suit is filed herewith as a
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`confidential exhibit. There are no other collateral agreements between the parties
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`made in connection with, or in contemplation of, the termination sought.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Solas and Apple are
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`concurrently filing a Joint Request to Keep Separate, which asks the Board to treat
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`the settlement agreement as business confidential information, and to keep it
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`separate from the files of this proceeding and the files of the Patent-in-Suit.
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`I.
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`Statement of Precise Relief Requested
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`The parties jointly request that the Board terminate this IPR, Case No.
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`IPR2020-01546, in its entirety.
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`Case No. IPR2020-01546
`U.S. Patent No. 7,573,068
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`II. Reasons Why Termination Is Appropriate
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`Termination of this proceeding in its entirety is proper. This IPR is still in an
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`early stage and has not been instituted. This Petition was filed on September 11,
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`2020 and the deadline for the institution decision is April 22, 2021.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Because all parties request
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`termination and the Board has not yet decided the merits of the proceeding, the Board
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`should terminate the proceeding.
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`When there are no petitioners remaining in an inter partes review, the Board
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`may terminate the proceeding entirely. 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Apple
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`is the only petitioner in this inter partes review. All parties support termination of
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`this proceeding. With no petitioners remaining in the proceeding and no final written
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`decision on the merits, termination of this proceeding entirely is appropriate.
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`The lawsuit between Solas and Apple involving the Patent-in-Suit has been
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`dismissed.
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`III. No Future Participation by Petitioner
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`Apple will not be participating further in this proceeding.
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`Case No. IPR2020-01546
`U.S. Patent No. 7,573,068
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`IV. Conclusion
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`The parties have settled the disputes in the above-captioned inter partes
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`review relating to the Patent-in-Suit. This inter partes review is in an early stage,
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`and the Board has not issued an institution decision or entered a final written decision
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`on the merits in this proceeding. Accordingly, the parties respectfully request the
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`Board to terminate this proceeding in its entirety.
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`Date: March 2, 2021
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` /Neil Rubin/
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`Respectfully submitted,
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`Neil Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`nrubin@raklaw.com
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`Counsel for Patent Owner
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`/Adam P. Seitz/
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`Adam P. Seitz (Reg. No. 52,206)
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Phone: (913) 777-5600
`Adam.Seitz@eriseip.com
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`Counsel for Petitioner
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`Case No. IPR2020-01546
`U.S. Patent No. 7,573,068
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`March 2, 2021, by filing this document through the Patent Trial and Appeal Board
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`End to End system as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner:
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`Adam Seitz, adam.seitz@eriseip.com
`Paul Hart, paul.hart@eriseip.com
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`Date: March 2, 2021
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` /Neil Rubin/
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`Neil Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
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`Counsel for Patent Owner
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