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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 IPR2022-00648
`Patent No. 9,860,044
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`JOINT REQUEST TO TREAT SETTLEMENT AGREEMENT AS
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`BUSINESS CONFIDENTIAL INFORMATION
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`Proceeding No.: IPR2022-00648
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, and the Board’s email
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`of December 15, 2022, Petitioner Apple Inc. (“Apple” or “Petitioner”) and Patent
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`Owner Telefonaktiebolaget LM Ericsson (“Ericsson” or “Patent Owner”)
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`(collectively, the “Settling Parties”) have reached a settlement and jointly move to
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`terminate the above-captioned proceeding. As permitted by statute, Apple and
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`Ericsson request that the Board treat as business confidential information, the true
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`and complete copy of the Settlement Agreement (Confidential Exhibit 1024)
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`between the parties, as referenced in the parties’ Joint Motion to Terminate
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`Proceeding (pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74), filed concurrently
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`herewith.
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`35 U.S.C. § 317(b) provides that:
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`At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential information,
`shall be kept separate from the file of the involved patents, and shall be
`made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause.
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`Likewise, 37 C.F.R. § 42.74(c) provides that:
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`A party to a settlement may request that the settlement be treated as
`business confidential information and be kept separate from the files of
`an involved patent or application. The request must be filed with the
`settlement. If a timely request is filed, the settlement shall only be
`available:
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`1
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`Proceeding No.: IPR2022-00648
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`(1) To a Government agency on written request to the Board; or
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`(2) To any other person upon written request to the Board to
`make the settlement agreement available, along with the fee
`specified in § 42.15(d) and on a showing of good cause.
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`The present request, which is being filed contemparaneously with the
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`Settlement Agreement, is timely and in accordance with the foregoing authority.
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`Therefore, the Settling Parties request that the Settlement Agreement (Confidential
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`Exhibit 1024) (i) be treated as business confidential information, (ii) be maintained
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`separate from the publicly available file of the involved patent, and (iii) shall be
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`made available only to Federal Government agencies on written request, or to
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`persons showing good cause on written request, pursuant to 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c).
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`Both parties also respectfully request that the Board inform us if anyone seeks
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`production of the agreement and afford the parties an opportunity to address whether
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`such request is supported by good cause.
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`Date: December 21, 2022
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`Date: December 21, 2022
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`Proceeding No.: IPR2022-00648
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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/ Peter C. Knops
`Peter C. Knops, Reg. No. 37,659
`Kayvan B. Noroozi, Pro Hac Vice
`Jason Wejnert, Reg. No. 55,722
`11601 Wilshire Blvd., Suite 2170
`Los Angeles, CA 90025
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`Attorneys for Patent Owner
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`3
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`Proceeding No.: IPR2022-00648
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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 Request to Treat Settlement
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`Agreement as Business Confidential Information was provided by email, to the
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`Patent Owner by serving the correspondence addresses of record as follows:
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`Peter C. Knops (peter@noroozipc.com)
`Kayvan B. Noroozi (kayvan@noroozipc.com)
`Jason Wejnert (jason@noroozipc.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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`4
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