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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 IPR2022-00464
`Patent No. 10,193,600
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Proceeding No.: IPR2022-00464
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`UPDATED EXHIBIT LIST
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`Description
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`U.S. Patent No. 10,193,600 (“the ’600 Patent”)
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`Certified File History of U.S. Patent No. 10,193,600
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`Declaration of Dr. Apostolos K. Kakaes for Inter Partes Review of
`U.S. Patent No. 10,193,600
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`Curriculum Vitae of Dr. Apostolos K. Kakaes
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`U.S. Patent Application Publication No. 2014/0016549 (“Novlan”)
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`3GPP TS 36.213, v12.3.0 (“36.213”)
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`3GPP TS 36.213, v10.1.0
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`U.S. Patent No. 8,891,676
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`Declaration of Friedhelm Rodermund in Support of Petition for
`Inter Partes Review of U.S. Patent No. 10,193,600
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`U.S. Provisional Patent Application No. 62/103,101 (“the ’600
`Patent Provisional”)
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`U.S. Patent Application Publication No. 2013/0163687 (“Jing”)
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`U.S. Provisional Patent Application No. 61/670,936 (the “Novlan
`Provisional”)
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`Dahlman et al., 4G – LTE / LTE-Advanced for Mobile Broadband
`(Academic Press 2011) (“Dahlman”)
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`Declaration of James L. Mullins in Support of Petition for Inter
`Partes Review of U.S. Patent No. 10,193,600
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`Exhibit
`No.
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`U.S. Patent Application Publication No. 2008/0051091
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`i
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`Proceeding No.: IPR2022-00464
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`1016
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`1017
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`Sesia, et al., LTE - The UMTS Long Term Evolution From Theory
`to Practice (Wiley 2d. ed. 2011) (“Sesia”)
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`Declaration of Jacob Robert Munford in Support of Petition for
`Inter Partes Review of U.S. Patent No. 10,193,600
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`1018
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`Confidential Settlement Agreement
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`ii
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`Proceeding No.: IPR2022-00464
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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 1018. 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.: IPR2022-00464
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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 ’600 patent. A true copy of the settlement agreement
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`is being filed concurrently herewith. See Confidential Exhibit 1018. 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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`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.: IPR2022-00464
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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
`Jeff Becker, Reg. No. 68,533
`2001 Ross Avenue, Suite 900
`Dallas, TX 75201
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`Attorneys for Patent Owner
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`Proceeding No.: IPR2022-00464
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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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`1018 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)
`Jeff Becker (jeff.becker@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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