UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
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`v.
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`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
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`Case IPR2022-01321
`Patent 11,122,357
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`JOINT MOTION TO TERMINATE PROCEEDING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
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`v.
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`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
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`Case IPR2022-01321
`Patent 11,122,357
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Proceeding No.: IPR2022-01321
`Patent No.: 11,122,357
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`UPDATED EXHIBIT LIST
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`Exhibit
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`Description
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`Ex. 1001 U.S. Patent No. 11,122,357 to Burnett (“the ’357 patent”)
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`Ex. 1002 File History of U.S. Patent No. 11,122,357
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`Ex. 1003 Declaration of Dr. Jeffrey S. Vipperman, Ph.D.
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`Ex. 1004 Curriculum Vitae of Jeffrey S. Vipperman, Ph.D.
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`Ex. 1005 U.S. Patent Application Publication No. 2004/0185804 to Kanamori
`et al. (“Kanamori”)
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`Ex. 1006 Iain A. McCowan et al., Near-Field Adaptive Beamformer for Robust
`Speech Recognition, Digital Signal Processing, Vol. 12, Issue 1
`(2002), 87-106 (“McCowan”)
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`Ex. 1007 Declaration of Shauna L. Wiest Regarding McCowan
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`Ex. 1008 U.S. Patent Application Publication No. 2007/0244698 to Dugger et
`al. (“Dugger”)
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`Ex. 1009 U.S. Patent No. 8,942,387 to Elko (“Elko”)
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`Ex. 1010 U.S. Patent No. 7,171,008 to Elko (“Elko ’008”)
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`Ex. 1011 U.S. Patent Application Publication No. 2003/0031328 to Elko et al.
`(“Elko ’328”)
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`Ex. 1012 U.S. Patent Application Publication No. 2008/0152167 to Taenzer
`(“Taenzer”)
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`Ex. 1013 Certified Translation of Japanese Unexamined Patent Application
`Publication No. H11-18186 and Translation (“Ikeda”)
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`Ex. 1014 Scheduling Order, Jawbone Innovations, LLC v. Google LLC,
`No. 6:21-cv-00985-ADA, Dkt. 27 (W.D. Tex. Jan. 7, 2022)
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`Proceeding No.: IPR2022-01321
`Patent No.: 11,122,357
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`Exhibit
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`Description
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`Ex. 1015 U.S. Patent Application Publication No. 2006/0120537 to Burnett et
`al. (“Burnett”)
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`Ex. 1016 Docket Control Order, Jawbone Innovations, LLC v. Amazon.com,
`Inc. et al., No. 2:21-cv-00435, Dkt. 33 (E.D. Tex. Apr. 6, 2022)
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`Ex. 1017 Lawrence E. Kinsler et al., Fundamentals of Acoustics, John Wiley &
`Sons, Inc. (4th ed. 2000)
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`Ex. 1018 M. P. Norton et al., Fundamentals of Noise and Vibration Analysis for
`Engineers, Cambridge Univ. Press (2d ed. 2003)
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`Ex. 1019 Complaint in Jawbone Innovations, LLC v. Samsung Elecs. Co., Ltd.,
`2:21-cv-00186 (E.D. Tex. May 27, 2021)
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`Ex. 1020 First Amended Complaint in Jawbone Innovations, LLC v. Samsung
`Elecs. Co., Ltd., 2:21-cv-00186 (E.D. Tex. October 26, 2021)
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`Ex. 1021 Second Amended Docket Control Order in Jawbone Innovations, LLC
`v. Samsung Elecs. Co., Ltd., 2:21-cv-00186 (E.D. Tex.)
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`Ex. 1022 Stipulation to be filed in Jawbone Innovations, LLC v. Samsung Elecs.
`Co., Ltd., 2:21-cv-00186 (E.D. Tex.)
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`Ex. 1023 Plaintiff’s Election of Asserted Claims in Jawbone Innovations, LLC
`v. Samsung Elecs. Co., Ltd., 2:21-cv-00186 (E.D. Tex.)
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`Ex. 1024 Complaint in Jawbone Innovations, LLC v. Apple Inc., Case No. 6:21-
`cv-00984 (W.D. Tex. September 23, 2021)
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`Ex. 1025 Scheduling Order in Jawbone Innovations, LLC v. Apple Inc., Case
`No. 6:21-cv-00984 (W.D. Tex. January 7, 2022) (summons issued as
`to Apple Inc. 9/23/2021)
`Ex. 1026 Stipulation to be filed in Jawbone Innovations, LLC v. Apple Inc.,
`Case No. 6:21-cv-00984 (W.D. Tex.)
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`Proceeding No.: IPR2022-01321
`Patent No.: 11,122,357
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`Description
`Exhibit
`Ex. 1027 Claim Construction Order, Jawbone Innovations, LLC v.
`Google LLC, No. 6:21-cv-00985-ADA, Dkt. 88 at 4 (W.D.
`Tex. Oct. 14, 2022)
`Ex. 1028 Motion to Transfer Venue, Jawbone Innovations, LLC v.
`Apple Inc., Case No. 6:21-cv-00984 (W.D. Tex. May 2,
`2022)
`Ex. 1029 Stay Order, Jawbone Innovations, LLC v. Apple Inc., Case
`No. 6:21-cv-00984 (W.D. Tex. Nov. 8, 2022)
`Ex. 1030 Stay Order, Jawbone Innovations, LLC v. Samsung Elecs.
`Co., Ltd., 2:21-cv-00186 (E.D. Tex. Nov. 29, 2022)
`Ex. 1031 Confidential Settlement Agreement Between Samsung and
`Jawbone
`Ex. 1032 Confidential Settlement and License Agreement Between
`Apple and Jawbone
`Ex. 1033 Confidential Additional Agreement Between Apple and
`Jawbone
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`iii
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`Proceeding No.: IPR2022-01321
`Patent No.: 11,122,357
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`Petitioners Samsung Electronics Co., Ltd., Samsung Electronics America,
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`Inc. (together “Samsung”) and Apple Inc. (“Apple”) and Patent Owner Jawbone
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`Innovations, LLC (“Jawbone”) have reached a settlement. Pursuant to 35 U.S.C. §
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`317(a) and 37 C.F.R. § 42.74, Samsung, Apple, and Jawbone move to terminate the
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`present inter partes review proceeding.
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`I.
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`STATEMENT OF FACTS
`Samsung and Jawbone have reached an agreement (the “Samsung Settlement
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`Agreement”) to resolve their disputes, and Apple and Jawbone have reached
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`agreements
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`(the “Apple Settlement Agreement” and “Apple Additional
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`Agreement”) to resolve their disputes. The Samsung Settlement Agreement, Apple
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`Settlement Agreement, and Apple Additional Agreement are collectively referred to
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`as “the Settlement Agreements” below.
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`Pursuant to 37 C.F.R. § 42.74(b), each of the Samsung Settlement Agreement,
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`Apple Settlement Agreement, and Apple Additional Agreement is in writing, and a
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`true and correct copy of each is being filed as Exhibits 1031, 1032, and 1033,
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`respectively. The Settlement Agreements are being filed electronically with access
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`to “Board Only.” Each of Samsung and Apple are filing a separate “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” concurrently with this Joint Motion to
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`Terminate, to treat the Settlement Agreements as business confidential information
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`1
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`Proceeding No.: IPR2022-01321
`Patent No.: 11,122,357
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`and to keep them separate from the files of the involved patent pursuant to 35 U.S.C.
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`§ 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 all 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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`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 all parties jointly request, for
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`the following reasons.
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`First, the parties have met the statutory requirement that they file a “joint
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`request” to terminate before the Office “has decided the merits of the proceeding.”
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`35 U.S.C. § 317(a). Under section 317(a), an inter partes review shall be terminated
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`upon such joint request “unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.” There are no other preconditions recited
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`in 35 U.S.C. § 317(a).
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`Second, the parties have reached settlements as to all the disputes in this
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`proceeding and as to the ’357 patent. A true copy of the respective settlement
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`agreements are filed concurrently herewith. See Confidential Ex. 1031; Confidential
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`2
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`Proceeding No.: IPR2022-01321
`Patent No.: 11,122,357
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`Ex. 1032, Confidential Ex. 1033. The parties request that the Settlement Agreements
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`be treated as business confidential information and be kept separate from the files of
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`this proceeding in accordance with 37 C.F.R. § 42.74(c). There are no other
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`agreements, oral or written, between the parties made in connection with, or in
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`contemplation of, the dismissal of the proceeding.
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`Third, termination would save significant further expenditure of resources by
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`the parties. Termination upon settlement, as requested, would also further the
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`purpose of inter partes review proceedings, which seek to provide an efficient and
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`less costly alternative forum for patent disputes. Further, maintaining the proceeding
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`would discourage further settlements, as patent owners in similar situations would
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`have a strong disincentive to settle if they perceived that an inter partes review
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`would continue regardless of a settlement.
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`III. CONCLUSION
`For the foregoing reasons, Samsung, Apple, and Jawbone respectfully request
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`termination of this inter partes review.
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`Date: January 9, 2023
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`Date: January 9, 2023
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`Proceeding No.: IPR2022-01321
`Patent No.: 11,122,357
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`Respectfully submitted,
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`/David L. Holt/
`
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`W. Karl Renner, Reg. No. 41,265
`David L. Holt, Reg. No. 65,161
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
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`Ali R. Sharifahmadian, Reg. No. 48,202
`Jin-Suk Park, Reg. No. 50,678
`J. Christopher Moulder, Reg. No. 70,490
`Arnold & Porter Kaye Scholer LLP
`601 Massachusetts Ave., NW
`Washington, DC 20001-3743
`Tel: 202-942-5000
`Fax: 202-942-5999
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`Attorneys for Petitioners
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`Respectfully submitted,
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`
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`/Richard M. Cowell/
`Peter Lambrianakos (Reg. No. 58,279)
`Richard M. Cowell (Reg. No. 79,143)
`411 Theodore Fremd Avenue, Suite 206
`South Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
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`Attorneys for Patent Owner
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`Proceeding No.: IPR2022-01321
`Patent No.: 11,122,357
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on January 9,
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`2023, a complete and entire copy of this Joint Motion to Terminate and its
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`supporting exhibits were provided by email, to the Patent Owner by serving the
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`email correspondence addresses of record as follows:
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`Peter Lambrianakos, plambrianakos@fabricantllp.com
`Vincent J. Rubino III, vrubino@fabricantllp.com
`Alfred R. Fabricant, ffabricant@fabricantllp.com
`Enrique W. Iturralde, eiturralde@fabricantllp.com
`Richard Cowell. rcowell@fabricantllp.com
`ptab@fabricantllp.com
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`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206
`South Rye, New York 10580
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`Tel. 212-257-5797
`Fax. 212-257-5796
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
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`5
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