`Tel: 571-272-7822
`
`
`
`
`Paper 13
`Date: January 27, 2023
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00648
`Patent 9,860,044 B2
`____________
`
`
`
`
`Before NATHAN A. ENGELS, SHARON FENICK, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`ENGELS, 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
`
`
`
`
`
`
`
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1–11, 15–27, and 33–41 in U.S. Patent No. 9,860,044 B2
`
`(Exhibit 1001, “the challenged patent”) under 35 U.S.C. §§ 311–319.
`
`Paper 2. Telefonaktiebolaget LM Ericsson (“Patent Owner”) filed
`
`a Preliminary Response. Paper 8.
`
`The Board issued a Decision Granting Institution of Inter Partes
`
`Review. Paper 9.
`
`After institution and 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 11. As Exhibit 1024,
`
`the parties filed a copy of an agreement titled “Global Patent License
`
`Agreement.” 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 12.
`
`II. DISCUSSION
`
`The parties represent that they have reached a settlement as to all the
`
`disputes in this proceeding and as to the challenged patent. Paper 11, 2. The
`
`parties represent that a “true copy of the settlement agreement” is filed
`
`as Exhibit 1024. 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. Id. The parties assert
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`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
`
`
`
`IPR2022-00648
`Patent 9,860,044 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.
`
`This proceeding has not progressed very far. Patent Owner has not
`
`filed its Response. 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,
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`unless the Board has already decided the merits of the proceeding.” Office
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`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 1024) 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 11) is granted;
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`FURTHER ORDERED that this proceeding is terminated as to all
`
`parties; and
`
`3
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`
`FURTHER ORDERED that the parties’ Joint Request to Treat
`
`Settlement Agreement as Business Confidential Information (Paper 12) is
`
`granted to the extent that the parties’ settlement agreement (Exhibit 1024)
`
`shall be treated as business confidential information and be kept separate
`
`from the file of U.S. Patent No. 9,860,044 B2 and made available only under
`
`the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`4
`
`
`
`IPR2022-00648
`Patent 9,860,044 B2
`
`For PETITIONER:
`
`Adam Seitz
`Paul Hart
`Jennifer Bailey
`ERISE IP, P.A.
`Adam.Seitz@eriseip.com
`Paul.Hart@eriseip.com
`Jennifer.Bailey@eriseip.com
`
`
`For PATENT OWNER:
`
`Peter Knops
`Jason Wejnert
`NOROOZI PC
`peter@noroozipc.com
`jason@noroozipc.com
`
`
`5
`
`
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