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 IPR2022-00459
`Patent No. 8,798,658
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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 IPR2022-00459
`Patent No. 8,798,658
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Proceeding No.: IPR2022-00459
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`UPDATED EXHIBIT LIST
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`Exhibit 1001 U.S. Patent No. 8,798,658
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`Exhibit 1002 File History of U.S. Patent No. 8,798,658
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`Exhibit 1003 Declaration of Dr. Matthew C. Valenti for Inter Partes Review of
`U.S. Patent No. 8,798,658 (“Valenti Declaration”)
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`Exhibit 1004 Curriculum Vitae of Matthew Valenti
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`Exhibit 1005 PCT Application PCT/CN2010/074128 / WO 2011/160274
`(“Zhou”)
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`Exhibit 1006 U.S. Patent No. 8,594,657 (“Wu”)
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`Exhibit 1007 U.S. Provision Patent Application No. 61/378,400 (“Wu
`Provisional”)
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`Exhibit 1008 “Minimization of Drive Tests Solution in 3GPP,” Wuri A.
`Hapsari et al. (June 2012) (“Hapsari”)
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`Exhibit 1009 “3GPP TR 36.805 v9.0.0,” 3rd Generation Partnership Project
`(Dec. 2009) (“3GPP TR 36.805”)
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`Exhibit 1010 “3GPP TS 37.320 vl.0.0,” 3rd Generation Partnership Project
`(Aug. 2010) (“3GPP TS 37.320 vl.0.0”)
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`Exhibit 1011 “3GPP TS 37.320 v10.0.0,” 3rd Generation Partnership Project
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`(Dec. 2010) (“3GPP TS 37.320 vl0.0.0”)
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`Exhibit 1012 Declaration of Friedhelm Rodermund in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,798,658
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`Exhibit 1013 Confidential Settlement Agreement
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`i
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`Proceeding No.: IPR2022-00459
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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 1013. 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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`Proceeding No.: IPR2022-00459
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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 ’658 patent. A true copy of the settlement agreement
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`is being filed concurrently herewith. See Confidential Exhibit 1013. 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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`Proceeding No.: IPR2022-00459
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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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`Date: December 21, 2022
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`Date: December 21, 2022
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`Proceeding No.: IPR2022-00459
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`Respectfully submitted,
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`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Jennifer C. Bailey, Reg. No. 52,583
`7015 College Boulevard, Suite 700
`Overland Park, KS 66211
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`Paul R. Hart, Reg. No. 59,646
`5299 DTC Boulevard, Suite 1340
`Greenwood Village, CO 80111
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`Attorneys for Petitioner
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`Respectfully submitted,
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`/s/ Chad C. Walters
`Chad C. Walters, Reg. No. 48,022
`Andrew Grado, Reg. No. 80,316
`2001 Ross Avenue, Suite 900
`Dallas, TX 75201
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`Attorneys for Patent Owner
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`Proceeding No.: IPR2022-00459
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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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`21, 2022, a complete and entire copy of this Joint Motion to Terminate and Exhibit
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`1013 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 (chad.walters@bakerbotts.com)
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`Andrew Grado (andrew.grado@bakerbotts.com)
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`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Jennifer C. Bailey, Reg. No. 52,583
`7015 College Boulevard, Suite 700
`Overland Park, KS 66211
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`Paul R. Hart, Reg. No. 59,646
`5299 DTC Boulevard, Suite 1340
`Greenwood Village, CO 80111
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`Attorneys for Petitioner
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