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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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`———————
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`APPLE INC.,
`
`Petitioner
`
`v.
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`TRAXCELL TECHNOLOGIES, LLC
`
`Patent Owner
`
`———————
`
`IPR2022-00073
`U.S. Patent No. 10,820,147
`
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`
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`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`
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`Joint Motion to Terminate
`IPR2022-00073 (U.S. Patent 10,820,147)
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`I.
`
`Introduction
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.71(a), Petitioner Apple,
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`Inc. (“Apple”) and Patent Owner Traxcell Technologies LLC (“Traxcell”)
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`(collectively, the “Parties”) jointly request termination of this inter partes review of
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`U.S. Patent 10,820,147 (“the ’147 patent”), case no. IPR2022-00073. The Parties
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`respectfully request that the Board grant this Motion because the Parties’ dispute
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`with respect to the ’147 patent has been resolved.
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`II.
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`Statements of Facts
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`Apple and Traxcell have entered into a written Settlement and License
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`Agreement (the “Agreement”) that has settled their dispute. As a result of the
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`Agreement, Traxcell’s claims against Apple in the following related lawsuits have
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`been dismissed or are in the process of being dismissed with prejudice:
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`• Traxcell Technologies, LLC v. Apple Inc., 6-21-cv-01314 (W.D. Tex.
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`2021)
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`• Apple Inc. v. Traxcell Technologies LLC, 3-21-cv-06059 (N.D. CA,
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`2021)
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`• Traxcell Technologies, LLC v. Apple Inc., 6-21-cv-00074 (W.D. Tex.
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`2021)
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`The parties have also agreed to jointly request termination of the present inter
`
`1
`
`
`
`Joint Motion to Terminate
`IPR2022-00073 (U.S. Patent 10,820,147)
`partes review IPR2022-00073 filed by Apple against the ’174 patent, as well as inter
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`partes reviews IPR2021-01552 and IPR2021-01553, respectively filed by Apple
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`against U.S. Patent Nos. 9,918,196 and 9,549,388. Therefore, the Parties’ dispute is
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`fully resolved.
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`The Parties are concurrently filing a copy of the confidential Agreement as
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`Ex. 1021 along with a request to treat it as confidential business information pursuant
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`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Ex. 1021 is being filed as “Board
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`and Parties Only.” The undersigned certify that there are no other collateral
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`agreements or understandings, oral or written, between the parties made in
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`connection with, or in contemplation of, the termination of the present proceeding,
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`and that Ex.1021 represents a true and accurate copy of the agreement between the
`
`parties that resolves the present proceeding.
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`III. Relief Requested
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`On March 23, 2022, the Parties informed the Board of their confidential
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`agreement via email and requested authorization to file a joint motion to terminate
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`the inter partes review IPR2022-00073 with respect to both parties. As set forth in
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`an email dated March 24, 2022, the Board authorized the filing of the requested joint
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`motion to terminate this proceeding as to both parties. Accordingly, the Parties
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`jointly request termination of the present proceeding.
`
`The Parties respectfully submit that such termination is appropriate. The
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`2
`
`
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`Joint Motion to Terminate
`IPR2022-00073 (U.S. Patent 10,820,147)
`relevant statutory provision on settlement provides that an inter partes review “shall
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`be terminated with respect to any petitioner upon the joint request of the petitioner
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`and the patent owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.” 35 U.S.C. § 317(a).
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`Public policy favors terminating the present inter partes review proceeding.
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`Congress and federal courts have expressed a strong interest in encouraging
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`settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
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`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
`
`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The
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`law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal
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`Circuit places a particularly strong emphasis on settlement. See Cheyenne River
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`Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors
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`settlement to reduce antagonism and hostility between parties). Further, the Board’s
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`Trial Practice Guide indicates that “[t]here are strong public policy reasons to favor
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`settlement between the parties to a proceeding.” Consolidated Trial Practice Guide,
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`at 86 (Nov. 2019).
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`Terminating this inter partes review also promotes the congressional goal of
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`establishing a more efficient patent system by limiting unnecessary and
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`counterproductive costs. See Changes
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`to Implement Inter Partes Review
`
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
`
`3
`
`
`
`Joint Motion to Terminate
`IPR2022-00073 (U.S. Patent 10,820,147)
`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012). Permitting
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`termination as to all parties provides certainty and fosters an environment that
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`promotes settlements, creating a timely, cost-effective alternative to litigation.
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`Additionally, termination of this inter partes review is appropriate as the
`
`Board has not yet “decided the merits of the proceeding.” Consolidated Trial
`
`Practice Guide, at 86. Apple filed its petition for inter partes review on October 22,
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`2022. Traxcell has filed its patent owner preliminary response on February 17, 2022.
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`The Board has not yet issued a decision to institute trial. The Parties have not
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`submitted any further briefs in response to the petition. The Parties have now settled
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`their dispute and have reached agreement to terminate this inter partes review. The
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`Board can conserve its resources through terminating the proceedings now,
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`removing the need for the Board to render an institution decision or final written
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`decision. Accordingly, under 35 U.S.C. § 317(a) the proceeding should be
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`terminated with respect to Petitioner Apple upon this joint request. Additionally, the
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`request to treat the Parties’ settlement Agreement as confidential business
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`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) should be
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`granted.
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`Therefore, the Parties respectfully request termination of this inter partes
`
`review.
`
`
`
`4
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`
`
`
`
`Date: March 24, 2022
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`
`
`
`
`
`
`
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`Joint Motion to Terminate
`IPR2022-00073 (U.S. Patent 10,820,147)
`
`Respectfully submitted,
`
`/David W. OBrien/
`David W. O’Brien
`Lead Counsel for Petitioner
`Registration No. 40,107
`
`
`
`
`
`
`
`William P. Ramey, III
`Lead Counsel for Patent Owner
`Registration No. 44,295
`
`5
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`
`
`Ex.1001
`Ex.1002
`Ex.1003
`Ex.1004
`Ex.1005
`Ex.1006
`Ex.1007
`Ex.1008
`Ex.1009
`Ex.1010
`Ex.1011
`Ex.1012
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`
`Ex.1016
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`Ex.1017
`
`Ex.1018
`
`Ex.1019
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`Joint Motion to Terminate
`IPR2022-00073 (U.S. Patent 10,820,147)
`PETITIONER’S EXHIBIT LIST
`
`
`U.S. Patent No. 10,820,147 to Reed
`Prosecution History of U.S. Patent No. 10,820,147
`Declaration of Dr. Michael Braasch, Ph.D.
`Curriculum Vitae of Dr. Michael Braasch, Ph.D.
`U.S. Patent No. 6,505,048 to Moles et al. (“Moles”)
`WO 2001/28270 to Sakarya et al. (“Sakarya”)
`U.S. Patent No. 6,716,101 to Meadows et al. (“Meadows”)
`U.S. Patent No. 6,738,808 to Zellner et al. (“Zellner”)
`U.S. Patent No. 7,010,306 by Tanibayashi et al. (“Tanibayashi”)
`U.S. Patent No. 6,192,314 to Khavakh et al. (“Khavakh”)
`U.S. Patent No. 6,202,023 to Hancock et al. (“Hancock”)
`Reserved
`Complaint Traxcell Technologies, LLC v. Apple, Inc., WDTX-6-21-
`cv-00074.
`Agreed Scheduling Order, Traxcell Technologies, LLC v. Apple,
`Inc., WDTX-6-21-cv-00074.
`Opposed Motion to Stay Case Pending the Final Disposition of
`Related Proceedings Before the Federal Circuit Court of Appeals,
`Traxcell Technologies, LLC v. Apple, Inc., WDTX-6-21-cv-00074
`(filed July 15, 2021).
`Plaintiff’s Corrected Asserted Claims, Traxcell Technologies, LLC
`v. Apple, Inc., WDTX-6-21-cv-00074 (served August 15, 2021).
`Opposed Motion to Amend Complaint, Traxcell Technologies, LLC
`v. Apple, Inc., WDTX-6-21-cv-00074 (filed August 6, 2021).
`Apple’s Complaint for Declaratory Judgment of Noninfringement
`of U.S. Patent No. 10,820,147, Apple Inc. v. Traxcell Technologies
`LLC, NDCA-3-21-cv-06059 (filed August 5, 2021).
`Order, Traxcell Technologies, LLC v. Google LLC, 6:21-CV-
`00023; Traxcell Technologies, LLC v. Apple, Inc., 6:21-CV-00074
`
`6
`
`
`
`Joint Motion to Terminate
`IPR2022-00073 (U.S. Patent 10,820,147)
`(filed December 16, 2021).
`Plaintiff’s Third Amended Complaint for Patent Infringement,
`Traxcell Technologies, LLC v. Verizon Wireless Personal
`Communications, 6:20-cv-01175 (filed October 25, 2021).
`Confidential Settlement and License Agreement
`
`Ex.1020
`
`Ex.1021
`
`
`
`
`
`7
`
`
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`Joint Motion to Terminate
`IPR2022-00073 (U.S. Patent 10,820,147)
`CERTIFICATE OF SERVICE
`
`
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and 37
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`C.F.R. § 42.105, service was made on Patent Owner as detailed below.
`
`Date of service March 24, 2022
`Manner of service Electronic mail
`Documents served Joint Motion to Terminate the Inter Partes Review
`Joint Request that the Settlement Agreement be Treated as
`Business Confidential Information and be Kept Separate
`under 35 U.S.C. § 317(b)
`Petitioner’s Updated Exhibit List
`Exhibit 1021
`William P. Ramey, III
`RAMEY & SCHWALLER, LLP
`5020 Montrose Blvd., Ste. 800
`Houston, Texas 77006
`Email: wramey@rameyfirm.com
`uspto@rameyfirm.com
`
`
`Melissa D. Schwaller
`RAMEY & SCHWALLER, LLP
`5020 Montrose Blvd., Ste. 800
`Houston, Texas 77006
`Email: mschwaller@rameyfirm.com
`
`Persons served
`
`
`
`
`/David W. OBrien/
`David W. O’Brien
`Lead Counsel for Petitioner
`Registration No. 40,107
`
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`8
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