`571-272-7822
`
`
`
`
`
`
`Paper 18
`Entered: January 10, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND APPLE INC.,
`Petitioners,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`
`
`IPR2022-01321
`Patent 11,122,357 B2
`
`
`
`
`Before LYNNE E. PETTIGREW, GEORGIANNA W. BRADEN,
`and NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`TERMINATION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`IPR2022-01321
`Patent 11,122,357 B2
`
`
`On January 9, 2023, with our authorization, Apple Inc. (“Apple”),
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`(“Samsung”), and Jawbone Innovations, LLC (“Jawbone”) (collectively,
`“the Parties”) filed a Joint Motion to Terminate the Proceeding. Paper 15
`(“Mot.”). In the Motion, the Parties represent that they have settled all
`disputes relating to U.S. Patent 11,122,357 B2, and they jointly request
`termination of this proceeding. Id. at 2. The Parties specifically state that
`Samsung and Jawbone reached agreement to resolve their disputes (see Ex.
`1031) and that Apple and Jawbone reached agreement to resolve their
`disputes (see Ex. 1032; Ex. 1033). Mot. 1. The Parties represent that,
`pursuant to 37 C.F.R. § 42.74(b), these agreements are in writing and that
`true and correct copies are filed as Exhibits 1031, 1032, and 1033 (“the
`Agreements”). Mot. 1; see id. at 2–3.
`This proceeding is in a preliminary stage, and we have not yet issued a
`decision on institution. In view of the Parties’ settlements and
`representations, we determine that good cause exists to terminate the
`proceeding. Accordingly, we grant the Motion.
`In addition, the Parties filed joint requests to treat the Agreements as
`business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). Paper 16 (“Apple-Jawbone Req.”); Paper 17 (“Samsung-
`Jawbone Req.”). We have reviewed the Agreements, which contain
`confidential business information regarding the settlement terms, and we
`determine that good cause exists to treat the Agreements as business
`confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). Accordingly, we grant this aspect of the parties’ joint requests.
`
`
`
`
`2
`
`
`
`IPR2022-01321
`Patent 11,122,357 B2
`
`
`The parties also “request that they be notified if and when the Board
`receives and/or considers a request for access to the Agreements, and be
`offered an opportunity to respond to any such request.” Apple-Jawbone
`Req. 2; Samsung-Jawbone Req. 2. However, neither the statute nor the
`regulation provides for any such notification or opportunity to respond, and
`the parties have not provided any reason or special circumstance that would
`justify issuing an order that purports to impose additional requirements.
`Accordingly, we deny that portion of the parties’ joint requests.
`This is not a final written decision pursuant to 35 U.S.C. § 318(a).
`
`It is:
`ORDERED that the Joint Motion to Terminate (Paper 15) is granted;
`FURTHER ORDERED that the Joint Requests (Papers 16 and 17)
`are granted-in-part, and the Agreements (Exhibits 1031, 1032, and 1033)
`shall be treated as business confidential information, kept separate from the
`file of U.S. Patent 11,122,357 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
`
`
`
`IPR2022-01321
`Patent 11,122,357 B2
`
`For PETITIONER:
`
`Ali R. Sharifahmadian
`Jin-Suk Park
`J. Christopher Moulder
`ARNOLD & PORTER KAYE SCHOLER LLP
`ali.sharifahmadian@arnoldporter.com
`jin.park@arnoldporter.com
`chris.moulder@arnoldporter.com
`
`W. Karl Renner
`David Holt
`Parvin Ghane
`FISH & RICHARDSON
`axf-ptab@fr.com
`holt2@fr.com
`ghane@fr.com
`
`For PATENT OWNER:
`
`Peter Lambrianakos
`Vincent J. Rubino, III
`Alfred R. Fabricant
`FABRICANT LLP
`plambrianakos@fabricantllp.com
`vrubino@fabricantllp.com
`ffabricant@fabricantllp.com
`Enrique W. Iturralde
`eiturralde@fabricantllp.com
`
`
`
`
`
`4
`
`
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