`571-272-7822
`
`Paper 16
`Date: December 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00457
`Patent 9,509,440 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, GEORGIANNA W. BRADEN, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`MEDLEY, Administrative Patent Judge.
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`IPR2022-00457
`Patent 9,509,440 B2
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–9, 11–19, 21, 23, 25, and 27 of U.S. Patent No.
`9,509,440 B2 (Ex. 1001, “the ’440 patent”). Paper 1 (“Pet.”).
`Telefonaktiebolaget LM Ericsson (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`On September 21, 2022, the Board instituted an inter partes review of
`claims 1–9, 11–19, 21, 23, 25, and 27 in the ’440 patent. Paper 7.
`On December 21, 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 along with a settlement agreement.
`Paper 14; Ex. 1017. 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 15.
`II. DISCUSSION
`The parties represent that they “have reached a settlement as to all the
`disputes in this proceeding and as to the ’440 patent.” Paper 14, 2. The
`parties represent that a “true copy of the settlement agreement” is filed
`as Exhibit 1017. 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 14, 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
`“maintaining the proceeding would discourage further settlements, as patent
`owners in similar situations would have a strong disincentive to settle if they
`
`2
`
`
`
`IPR2022-00457
`Patent 9,509,440 B2
`perceived that an inter partes review would continue regardless of a
`settlement.” Id. at 3.
`Patent Owner has not yet filed a Response. Based on the facts before
`us, we determine that it is appropriate to terminate this proceeding. We also
`determine that it is appropriate to treat the parties’ settlement agreement
`(Exhibit 1017) 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).
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that the parties’ Joint Motion to Terminate Proceeding
`(Paper 14) is granted;
`FURTHER ORDERED that this proceeding is terminated as to all
`parties; and
`FURTHER ORDERED that the parties’ Joint Request to Treat
`Settlement Agreement as Business Confidential Information (Paper 15) is
`granted, and the parties’ settlement agreement (Exhibit 1017) shall be treated
`as business confidential information and be kept separate from the file of
`U.S. Patent No. 9,509,440 B2 and made available only under the provisions
`of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`3
`
`
`
`IPR2022-00457
`Patent 9,509,440 B2
`For PETITIONER:
`Adam Seitz
`Jennifer Bailey
`Paul Hart
`ERISE IP, P.A.
`Adam.seitz@eriseip.com
`Jennifer.bailey@eriseip.com
`Paul.hart@eriseip.com
`
`For PATENT OWNER:
`
`Scott Hejny
`Nicholas Mathews
`MCKOOL SMITH, P.C.
`shejny@mckoolsmith.com
`nmathews@mckoolsmith.com
`
`
`
`
`
`
`4
`
`
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