`Tel: 571-272-7822
`
`Paper No. 18
`
`Entered: January 26, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00468
`Patent 10,512,027
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`IPR2022-000468
`Patent 10,512,027
`
`
`INTRODUCTION
`I.
`With the Board’s authorization, Petitioner and Patent Owner filed a
`Joint Motion that requests termination in the above-captioned proceeding.
`Paper 16 (“Motion”). Along with the Motion, the parties filed a copy of a
`Settlement and License Agreement. Ex. 1022 (“Settlement Agreement”).
`The parties also filed a Joint Request that the Settlement Agreement be
`treated as business confidential information and kept separate from the file
`of U.S. Patent No. 10,512,027 B2 (Ex. 1001, “the ’027 patent”). Paper 17
`(“Joint Request”).
`
`II. DISCUSSION
`According to the Motion, the Settlement Agreement resolves the
`parties’ disputes involving the ’027 patent, and Exhibit 1022 is a true copy
`of the agreement or understanding made in connection with, or in
`contemplation of, the termination of the above-captioned proceeding. See
`Paper 16, 1–3. The proceeding is not at a late stage, and we have not yet
`decided the merits of the proceeding. Additionally, the Settlement
`Agreement settles all disputes in this proceeding and as to the ’027 patent.
`See id. at 2. Thus, we determine that good cause exists to grant the Motion
`and terminate the proceeding.
`The parties request that the Settlement Agreement be treated as
`business confidential information and kept separate from the file of the ’027
`patent. Paper 17, 1–2. After reviewing the Settlement Agreement, we find
`that it contains confidential business information about the settlement terms.
`Thus, good cause exists to treat the Settlement Agreement as business
`confidential information pursuant to 37 C.F.R. § 42.74(c), and we grant this
`part of the parties’ request.
`
`2
`
`
`
`IPR2022-000468
`Patent 10,512,027
`
`The parties also “request that the Board inform us if anyone seeks
`
`production of the agreement and afford the parties an opportunity to address
`whether such request is supported by good cause.” Paper 17, 2. But the
`statute does not provide for any such notification or opportunity to respond.
`See 35 U.S.C. § 317(b). Nor does the regulation. See 37 C.F.R. § 42.74(c).
`Also, we see no persuasive reason or special circumstance here that would
`justify issuing an order that imposes these additional requirements. Thus, we
`deny that part of the parties’ joint request.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`It is
`ORDERED that the Joint Motion to Terminate (Paper 16) is granted;
`
`FURTHER ORDERED that the Joint Request (Paper 17) is granted-
`
`in-part, and the Settlement Agreement (Exhibit 1022) shall be treated as
`business confidential information, kept separate from the file of U.S. Patent
`No. 10,512,027 B2, and made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause on
`written request, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
`and
`
`FURTHER ORDERED that this proceeding is terminated.
`
`
`
`3
`
`
`
`IPR2022-000468
`Patent 10,512,027
`
`
`PETITIONER:
`
`Adam Seitz
`Paul Hart
`Jennifer Bailey
`ERISE IP, P.A.
`Adam.seitz@eriseip.com
`Paul.hart@eriseip.com
`Jennifer.bailey@eriseip.com
`
`
`PATENT OWNER:
`
`Peter Knops
`Jason Wejnert
`NOROOZI PC
`peter@noroozipc.com
`jason@noroozipc.com
`
`
`
`
`
`
`
`
`
`
`4
`
`
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