`Tel: 571-272-7822
`
`
`
`
`Paper No. 12
`Entered: Jun 17, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
` APPLE INC.,
`Petitioner,
`
`v.
`
`
`
` FUTURE LINK SYSTEMS, LLC,
`Patent Owner.
`_______________
`
`IPR2021-01487 (Patent 6,622,108 B1)
`IPR2021-01488 (Patent 6,807,505 B2)1
`_______________
`
`Before KARL D. EASTHOM, KEVIN C. TROCK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial and
`Granting Joint Request to Treat the Release Agreement
`as Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`1 This Order addresses the same issues in each proceeding. The parties must
`obtain approval before using this heading style in subsequent papers.
`
`
`
`IPR2021-01487 (Patent 6,622,108 B1)
`IPR2021-01488 (Patent 6,807,505 B2)
`
`
`INTRODUCTION
`I.
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively, “the Parties”) filed a Joint Motion to Terminate in each of the
`above-captioned proceedings. Paper 10 (“Joint Motion”).2 Along with the
`Joint Motion, the Parties filed a copy of a “Release Agreement” (Ex. 1013)
`and a “Joint Request” (Paper 11) that the Release Agreement be treated as
`business confidential information and kept separate from the files of the
`patents involved in the above-captioned proceedings.
`II. DISCUSSION
`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.”
`In the Joint Motion, the Parties represent that the Release Agreement
`resolves their disputes involving the patents at issue in the above-captioned
`proceedings. Joint Motion 1. The Parties also represent that they have filed
`a true copy of the Release Agreement and that “[t]here are no other collateral
`agreements between the parties made in connection with, or in
`contemplation of, the termination sought.” Id.
`We instituted trial for each of the above-captioned proceedings (see
`Paper 8), but we have not yet decided the merits of the proceedings, and
`final written decisions have not been entered. Notwithstanding that the
`proceedings have moved beyond the preliminary stage, the Parties have
`
`
`2 The relevant Papers and Exhibits filed in the above-captioned proceedings
`are substantively the same. We cite to the record in IPR2021-01487 unless
`otherwise indicated.
`
`2
`
`
`
`IPR2021-01487 (Patent 6,622,108 B1)
`IPR2021-01488 (Patent 6,807,505 B2)
`
`shown adequately that the termination of the proceedings is appropriate.
`Under these circumstances, we determine that good cause exists to terminate
`the proceedings with respect to the Parties.
`After reviewing the Release Agreement, we find that it contains
`confidential business information regarding the terms of settlement. Thus,
`good cause exists to treat the Release Agreement as business confidential
`information pursuant to 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motions to Terminate (IPR2021-01487,
`Paper 10; IPR2021-01488, Paper 10) are granted, and IPR2021-01487 and
`IPR2021-01488 are terminated; and
`FURTHER ORDERED that the Joint Requests to treat the Release
`Agreement as business confidential information (IPR2021-01487, Paper 11;
`IPR2021-01488, Paper 11) are granted, and the Release Agreements
`(IPR2021-01487, Ex. 1013; IPR2021-01488, Ex. 1012) shall be kept
`separate from the files of the respective patent files (U.S. Patent No.
`6,622,108 B1; U.S. Patent No. 6,807,505 B2), and made available only to
`Federal Government agencies on written request, or to any person on a
`showing of good cause, pursuant to 37 C.F.R. § 42.74(c).
`
`3
`
`
`
`IPR2021-01487 (Patent 6,622,108 B1)
`IPR2021-01488 (Patent 6,807,505 B2)
`
`For PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`For PATENT OWNER:
`
`Reza Mirzaie
`James Milkey
`RUSS, AUGUST & KABAT
`rmirzaie@raklaw.com
`jmilkey@raklaw.com
`
`4
`
`
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