`Tel: 571-272-7822
`
`Paper 17
`Date: December 23, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00459
`Patent 8,798,658 B2
`____________
`
`
`
`
`Before SHARON FENICK, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`FENICK, 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
`
`
`
`
`
`
`
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–5, 12–16, 22–24, 26–28, and 30 in U.S. Patent No.
`8,798,658 B2 (Exhibit 1001, “the ’658 patent”). Paper 1.
`Telefonaktiebolaget LM Ericsson (“Patent Owner”) filed a Preliminary
`Response. Paper 6.
`On July 20, 2022, the Board instituted an inter partes review of claims
`1–5, 12–16, 22–24, 26–28, and 30 in the ’658 patent. Paper 8.
`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. Paper 15. As Exhibit 1013,
`the parties filed a copy of an agreement titled “Global Patent License
`Agreement.” Ex. 1013, 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 16.
`II. DISCUSSION
`The parties represent that they “have reached a settlement as to all the
`disputes in this proceeding and as to the ’658 patent.” Paper 15, 2. The
`parties represent that a “true copy of the settlement agreement” is filed
`as Exhibit 1013. 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 15, 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
`
`2
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`
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`IPR2022-00459
`Patent 8,798,658 B2
`
`“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.
`Patent Owner filed a Non-Contingent Motion to Amend (Paper 12);
`Petitioner has not yet filed any opposition to that motion. 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 1013) 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 15) is granted;
`FURTHER ORDERED that this proceeding is terminated as to all
`parties; and
`
`3
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`
`FURTHER ORDERED that the parties’ Joint Request to Treat
`Settlement Agreement as Business Confidential Information (Paper 16) is
`granted to the extent that the parties’ settlement agreement (Exhibit 1013)
`shall be treated as business confidential information and be kept separate
`from the file of U.S. Patent No. 8,798,658 B2 and made available only under
`the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`4
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`For PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`Jennifer C. Bailey
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`jennifer.bailey@eriseip.com
`
`For PATENT OWNER:
`
`Chad C. Walters
`Andrew Grado
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`andrew.grado@bakerbotts.com
`
`5
`
`
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