`Tel: 571-272-7822
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`Paper 21
`Entered: December 19, 2022
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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,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00338
`Patent 8,995,357 B2
`____________
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`
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`Before SALLY C. MEDLEY, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
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`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`Granting Joint Request to Treat Settlement
`Agreement as Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
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`IPR2022-00338
`Patent 8,995,357 B2
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`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–4, 6–10, 12, 14–17, and 19–24 in U.S. Patent
`No. 8,995,357 B2 (Exhibit 1001, “the ’357 patent”) under 35 U.S.C.
`§§ 311–319. Paper 2. Telefonaktiebolaget LM Ericsson (“Patent Owner”)
`filed a Preliminary Response. Paper 6.
`On September 9, 2022, the Board instituted an inter partes review of
`claims 1–4, 6–10, 12, 14–17, and 19–24 in the ’357 patent. Paper 7.
`On December 16, 2022, after receiving Board authorization, Petitioner
`and Patent Owner filed a Joint Motion to Terminate Proceeding under
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.74. Paper 19. As Exhibit 1036,
`the parties filed a copy of an agreement titled “Global Patent License
`Agreement.” Ex. 1036, 1. The parties also filed a Joint Request to Treat
`Settlement Agreement as Business Confidential Information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c). Paper 20.
`II. DISCUSSION
`The parties represent that they “have reached a settlement as to all the
`disputes in this proceeding and as to the ’357 patent.” Paper 19, 2. The
`parties represent that a “true copy of the settlement agreement” is filed
`as Exhibit 1036. Id. The parties also represent that “[n]o other such
`agreements, written or oral, exist between or among” the parties. Id.
`The parties assert that termination “would save significant further
`expenditure of resources by” the parties. Paper 19, 2. The parties assert
`that termination “would also further the purpose of inter partes review
`proceedings, which seek to provide an efficient and less costly alternative
`forum for patent disputes.” Id. at 2–3. Additionally, the parties contend that
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`IPR2022-00338
`Patent 8,995,357 B2
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`“maintaining the proceeding would discourage further settlements, as patent
`owners in similar situations would have a strong disincentive to settle if they
`perceived that an inter partes review would continue regardless of a
`settlement.” Id. at 3.
`This proceeding has not progressed very far. Patent Owner has not
`filed its Response. Terminating this proceeding will save the Board
`administrative and judicial resources, e.g., in conducting an oral argument
`and issuing a final written decision to decide the patentability issues raised
`in the Petition. Further, “[t]here are strong public policy reasons to favor
`settlement between the parties to a proceeding,” and “[t]he Board expects
`that a proceeding will terminate after the filing of a settlement agreement,
`unless the Board has already decided the merits of the proceeding.” Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
`Under these circumstances, we determine that it is appropriate to
`terminate this proceeding. We also determine that it is appropriate to treat
`the parties’ settlement agreement (Exhibit 1036) as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision under 35 U.S.C.
`§ 318(a).
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`III. ORDER
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`Accordingly, it is
`ORDERED that the parties’ Joint Motion to Terminate Proceeding
`(Paper 19) is granted;
`FURTHER ORDERED that this proceeding is terminated as to all
`parties; and
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`IPR2022-00338
`Patent 8,995,357 B2
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`FURTHER ORDERED that the parties’ Joint Request to Treat
`Settlement Agreement as Business Confidential Information (Paper 20) is
`granted, and the parties’ settlement agreement (Exhibit 1036) shall be treated
`as business confidential information and be kept separate from the file of
`U.S. Patent No. 8,995,357 B2 and made available only under the provisions
`of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`IPR2022-00338
`Patent 8,995,357 B2
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`For PETITIONER:
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`W. Karl Renner
`Thomas A. Rozylowicz
`Andrew. B. Patrick
`Kim Leung
`Daniel D. Smith
`FISH & RICHARDSON P.C.
`IPR50095-0060IP1@fr.com
`PTABInbound@fr.com
`renner@fr.com
`rozylowicz@fr.com
`patrick@fr.com
`leung@fr.com
`dsmith@fr.com
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`For PATENT OWNER:
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`Chad C. Walters
`James Williams
`Matthew Chuning
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`james.williams@bakerbotts.com
`matthew.chuning@bakerbotts.com
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