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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`TELEFONAKTIEBOLAGET LM ERICSSON
`Patent Owner.
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`Case IPR2022-00338
`Patent 8,995,357
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`JOINT MOTION TO TERMINATE PROCEEDING
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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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`TELEFONAKTIEBOLAGET LM ERICSSON
`Patent Owner.
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`Case IPR2022-00338
`Patent 8,995,357
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Case IPR2022-00338
`Attorney Docket No: 50095-0060IP1
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`APPLE LIST OF EXHIBITS
`U.S. Patent No. 8,995,357 to Erik Dahlman et al. (“the ’357
`patent”)
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`APPLE-1001
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`APPLE-1002
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`Excerpts from the Prosecution History of the ’357 Patent (“the
`Prosecution History”)
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`APPLE-1003
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`Declaration of Jonathan Wells, Ph.D., M.B.A.
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`APPLE-1004
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`U.S. Patent Application Publication No. 2010/0167746 to Lee
`et al. (“Lee-746”)
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`APPLE-1005
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`System Information, R2-072183, 3GPP TSG RAN WG2#58,
`07-11 May 2007 (“R2-072183”)
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`APPLE-1006
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`U.S. Patent Application Publication No. 2008/0285668 to Lee
`et al. (“Lee-668”)
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`APPLE-1007
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`Scheduling of D-BCH, R2-071762, 3GPP TSG-RAN WG2
`#58, 7-11 May 2007 (“R2-071762”)
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`APPLE-1008
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`U.S. Patent Application No. 2008/0056198 to Charpentier et al.
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`APPLE-1009
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`APPLE-1010
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`3rd Generation Partnership Project; Technical Specification
`Group Radio Access Network; Radio Interface Protocol
`Architecture (Release 7), 3GPP TS 25.301 V7.1.0 (2007-03)
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`3rd Generation Partnership Project; Technical Specification
`Group GSM/EDGE Radio Access Network; Mobile radio
`interface layer 3 specification; Radio Resource Control (RRC)
`protocol (Release 7), 3GPP TS 44.018 V7.8.0 (2007-03)
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`APPLE-1011
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`Downlink Model for HSDPA, TSGR1#19(01)0312, TSG-RAN
`Working Group 1 #19, February 26-March 2, 2001
`(“TSGR1#19(01)0312”)
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`APPLE-1012
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`APPLE-1013
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`Case IPR2022-00338
`Attorney Docket No: 50095-0060IP1
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`System information structure (with TP), R2-071911, 3GPP
`TSG-RAN WG2 Meeting #58, 7-11 May 2007 (“R2-071911”)
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`Variable TTI proposal for HSDPA, TSGR1#18(01)0079, TSG-
`RAN Working Group 1, January 15-19, 2001
`(“TSGR1#18(01)0079”)
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`APPLE-1014
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`U.S. Patent Application Publication No. 2007/0263528 to
`Mukherjee (“Mukherjee”)
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`APPLE-1015
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`U.S. Patent Application Publication No. 2007/0064669 to
`Classon et al.
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`APPLE-1016
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`U.S. Patent Application Publication No. 2009/0209256 to
`Nakashima et al.
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`APPLE-1017
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`U.S. Patent Application Publication No. 2008/0298315 to Ihm
`et al.
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`APPLE-1018
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`System information scheduling and change notification, R2-
`071337, 3GPP TSG-RAN2 Meeting #57bis, 26th-30th March
`2007 (“R2-071337”) (Resubmitted as R2-071912)
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`APPLE-1019-1034
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`APPLE-1035
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`APPLE-1036
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`RESERVED
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`Declaration of Friedhelm Rodermund
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`Confidential Settlement Agreement
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`Attorney Docket No: 50095-0060IP1
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`ERICSSON LIST OF EXHIBITS
`Declaration of Dr. Zygmunt Haas
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`Prosecution History of the ’357 Patent
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`Draft text proposal capturing agreements on system
`information, R2-072205, 3GPP TSG-RAN2 Meeting #58, 07-
`11 May 2007 (“Samsung Proposal”)
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`System information scheduling and change notification,
`R2071912, 3GPP TSG-RAN2 Meeting #58, 07-11 May 2007
`(“Samsung Discussion document”)
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`Discussion on BCCH Update, R2-072736, 3GPP TSG-RAN2
`Meeting #58bis, 25-29 June 2007 (“R2-072736”)
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`Curriculum Vitae of Zygmunt Haas, Ph.D.
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`Prosecution History of the ’355 Patent
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`U.S. Patent No. 9,532,355 to Erik Dahlman et. al. (“the ’355
`Patent”)
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`Apple’s Proposed Constructions of Identified Claim Terms in
`related ITC Litigation
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Case IPR2022-00338
`Attorney Docket No: 50095-0060IP1
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`Petitioner Apple Inc. (“Apple” or “Petitioner”) and Patent Owner
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`Telefonaktiebolaget LM Ericsson (“Ericsson” or “Patent Owner”) have reached a
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`settlement. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Apple and
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`Ericsson move to terminate the present inter partes review proceeding.
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`I.
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`STATEMENT OF FACTS
`Apple and Ericsson (collectively, the “Settling Parties”) have reached an
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`agreement (the “Settlement Agreement”) to resolve their disputes.
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`Pursuant to 37 C.F.R. § 42.74(b), the Settlement Agreement is in writing, and
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`a true and correct copy is being filed as Exhibit 1036. The Settlement Agreement is
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`being filed electronically with access to “Board and Parties Only.” A “Joint Request
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`to File Settlement Agreement as Business Confidential Information Pursuant to 35
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`U.S.C. § 317 and 37 C.F.R. § 42.74” is being filed concurrently with this Joint
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`Motion to Terminate, to treat the Settlement Agreement as business confidential
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`information and to keep it separate from the files of the involved patent pursuant to
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`II. RELIEF REQUESTED
`Termination of this inter partes review is requested, and the Settling Parties
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`respectfully submit that such termination is justified. “There are strong public policy
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`reasons to favor settlement between the parties to a proceeding.” Consolidated Trial
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`Practice Guide 86 (Nov. 2019). “The Board expects that a proceeding will terminate
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`Attorney Docket No: 50095-0060IP1
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`after the filing of a settlement agreement, unless the Board has already decided the
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`merits of the proceeding.” Id. (citing 35 U.S.C. §§ 317(a)).
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`The Board should terminate this proceeding, as the Settling Parties jointly
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`request, for the following reasons.
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`First, Apple and Ericsson have met the statutory requirement that they file a
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`“joint request” to terminate before the Office “has decided the merits of the
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`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review shall
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`be terminated upon such joint request “unless the Office has decided the merits of
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`the proceeding before the request for termination is filed.” There are no other
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`preconditions recited in 35 U.S.C. § 317(a).
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`Second, Apple and Ericsson have reached a settlement as to all the disputes
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`in this proceeding and as to the ’357 patent. A true copy of the settlement agreement
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`is being filed concurrently herewith. See Confidential Exhibit 1036. Apple and
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`Ericsson request that the settlement agreement be treated as business confidential
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`information and be kept separate from the files of this proceeding in accordance with
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`37 C.F.R. § 42.74(c). No other such agreements, written or oral, exist between or
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`among the Settling Parties.
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`Third, termination would save significant further expenditure of resources by
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`the Settling Parties. Termination upon settlement, as requested, would also further
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`the purpose of inter partes review proceedings, which seek to provide an efficient
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`Attorney Docket No: 50095-0060IP1
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`and less costly alternative forum for patent disputes. Further, maintaining the
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`proceeding would discourage further settlements, as patent owners in similar
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`situations would have a strong disincentive to settle if they perceived that an inter
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`partes review would continue regardless of a settlement.
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`III. CONCLUSION
`For the foregoing reasons, Apple and Ericsson respectfully request
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`termination of this inter partes review.
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`Respectfully submitted,
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`Date: December 16, 2022
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`Date: December 16, 2022
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`/Thomas A. Rozylowicz/
`Thomas Rozylowicz, Reg. No. 50,620
`FISH & RICHARDSON P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Attorney for Petitioner
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`/Chad C. Walters/
`Chad C. Walters, Reg. No. 48,022
`BAKER BOTTS L.L.P
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
`Attorney for Patent Owner
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`Case IPR2022-00338
`Attorney Docket No: 50095-0060IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on December
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`16, 2022, a complete and entire copy of this Joint Motion to Terminate and Exhibit
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`1036 were provided by email, to the Patent Owner by serving the email
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`correspondence addresses of record as follows:
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`Chad C. Walters, Reg. No. 48,022
`James Williams, Reg. No. 67,945
`Matthew Chuning, Reg. No. 80,863
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`BAKER BOTTS L.L.P
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
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` chad.walters@bakerbotts.com
`James.williams@bakerbotts.com
`matthew.chuning@bakerbotts.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
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