Trials
`Cook, Elliot
`Brett Cooper; robert@auchterlaw.com; Jarratt, Scott; Andy Ehmke IPR; Scott Jarratt IPR; Jordan, Dan; Berntsen,
`Matthew; MacDonald, Luke; Trials
`RE: Case Nos. IPR2022-01354, IPR2022-01309, IPR2022-01559, and IPR2022-01543 - Joint Motions to
`Terminate
`Tuesday, April 4, 2023 2:29:10 PM
`
`From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Counsel:
`
`The respective panels authorize the parties to file a joint motion to terminate and/or dismiss the
`petitions in IPR2022-01354, IPR2022-01309, IPR2022-01559, and IPR2022-01543, and to dismiss
`Petitioner Volkswagen Group of America, Inc. in IPR2022-00529, provided that each filing includes
`an exhibit containing a true copy of any and all agreements made in connection with or
`contemplation of the requested termination, including any collateral agreements. See 35 U.S.C. §
`317(b) (governing post-institution settlements); 42.74(b) (governing settlements in general). In
`addition, the respective panels authorize the parties to file a joint request to treat the agreement as
`business confidential under 37 C.F.R. § 42.74(c) in each case. That request may be part of the joint
`motion to terminate or may be a separate paper, and the exhibit containing the agreement(s) may
`be filed “For Board and Parties Only.”
`
`The statutory due date for a respective decision on institution in IPR2022-01543 and IPR2022-01559
`is April 13, 2023. Therefore, to ensure the respective panels are able to process any motions prior to
`rendering a decision on institution in each of these two cases, the parties must file any settlement
`motions/exhibits on or before April 10, 2023. Otherwise, the respective panels will render a decision
`on institution in those cases on or after April 11, 2023. In any event, the panels request the parties
`to inform the Board as soon as possible as to the intended date of filing of any settlement
`motions/exhibits. The parties are responsible for ensuring that the filings are without deficiencies or
`do not create unique circumstances that may raise issues. Given the impending due date for a
`decision on institution, there may not be time prior to the due date to cure any deficiency or address
`any unique circumstances.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Cook, Elliot <Elliot.Cook@finnegan.com>
`Sent: Monday, April 3, 2023 3:21 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Brett Cooper <bcooper@bc-lawgroup.com>; robert@auchterlaw.com; Jarratt, Scott
`<Scott.Jarratt@haynesboone.com>; Andy Ehmke IPR <andy.ehmke.ipr@haynesboone.com>; Scott
`Jarratt IPR <Scott.Jarratt.IPR@haynesboone.com>; Jordan, Dan <Dan.Jordan@finnegan.com>;
`Berntsen, Matthew <Matthew.Berntsen@finnegan.com>; MacDonald, Luke
`<Luke.MacDonald@finnegan.com>
`
`Exhibit 3001
`
`

`

`Subject: Case Nos. IPR2022-01354, IPR2022-01309, IPR2022-01559, and IPR2022-01543 - Joint
`Motions to Terminate
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`To the Honorable Board,
`
`The parties to the below-captioned matters would like to request the Board’s permission to file (1) a
`joint motion to terminate these proceedings based on a settlement agreement and (2) a joint
`motion to treat the settlement agreement as business confidential information. All parties to these
`proceedings agree to this joint request.
`
`IPR2022-01354: U.S. Patent No. 10,546,685
`IPR2022-01309: U.S. Patent No. 10,193,392
`IPR2022-01559: U.S. Patent No. 7,825,537
`IPR2022-01543: U.S. Patent No. 10,243,400
`
`In addition, because Case No. IPR2022-01309 was joined with Case No. IPR2022-00529, the parties
`request severance and termination as to petitioner in that proceeding as well. The termination of
`petitioner does not affect the other petitioner (Apple Inc.) in Case No. IPR2022-00529.
`
`If the Board would like to hold a teleconference to discuss the parties’ request, the parties are
`available at the Board’s convenience.
`
`Respectfully,
`Elliot
`
`Reg. No. 61,769
`
`Elliot Cook
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`1875 Explorer Street, Suite 800, Reston, VA 20190-5675
`+1 571 203 2738 | fax: +1 202 408 4400 | elliot.cook@finnegan.com | www.finnegan.com
`
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`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
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`
`