`Tel: 571-272-7822
`
`Paper 21
`Date: December20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`Before SHARON FENICK, STEVEN M. AMUNDSON,and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`TERMINATION
`Dueto Settlement After Institution of Trial
`Granting Joint Request to Treat Settlement
`Agreement as Business Confidential Information
`35 U.S.C. $317; 37 CER. $ 42.74
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner’’) filed a Petition requesting an interpartes
`
`review of claims 1-18 in U.S. Patent No. 9,300,432 B2 (Exhibit 1001,
`
`“the °432 patent”). Paper2. Telefonaktiebolaget LM Ericsson (“Patent
`
`Owner’) did not file a Preliminary Response.
`
`On September 13, 2022, the Board instituted an interpartes review of
`
`claims 1—18 of the *432 patent. Paper 6.
`
`On December16, 2022, after receiving Board authorization,Petitioner
`
`and Patent Ownerfiled a Joint Motion to Terminate Proceeding under
`
`35 U.S.C. §317(a) and 37 C.F.R. § 42.74. Paper 19. As Exhibit 1029,
`
`the parties filed a copy of an agreementtitled “Global Patent License
`
`Agreement.” Ex. 1029, 1. 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 20.
`
`Il. DISCUSSION
`
`Theparties represent that they “have reached a settlementas toall the
`
`disputes in this proceeding and asto the ’432 patent.” Paper 19,2. The
`
`parties representthat a “true copy of the settlement agreement”1s filed
`
`as Exhibit 1029.
`
`/d. The parties also representthat “[n]o other such
`
`agreements, written or oral, exist between or among”the parties.
`
`/d.
`
`Theparties assert that termination “would save significant further
`
`expenditure of resources by” the parties. Paper 19, 2. The parties assert
`
`that termination “would also further the purpose of interpartes review
`
`proceedings, which seek to provide an efficient andless costly alternative
`
`forum for patent disputes.” /d. at 2-3. Additionally, the parties contend that
`
`“maintaining the proceeding would discourage further settlements, as patent
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`ownersin similar situations would have a strong disincentive to settle if they
`
`perceivedthat an interpartes review would continue regardless ofa
`
`settlement.” /d. at 3.
`
`Patent Ownerhasnotyetfiled a Response. Terminating this
`
`proceeding will save the Board administrative andjudicial resources, e.g., in
`
`conducting an oral argumentand issuing a final written decision to decide
`
`the patentability issues raised in the Petition. Further, “[t]here are strong
`
`public policy reasonsto favor settlement betweenthe parties to a
`
`proceeding,” and “[t]he Board expects that a proceeding will terminate after
`
`the filing of a settlement agreement, unless the Board has already decided
`
`the merits of the proceeding.” Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,768 (Aug. 14, 2012).
`
`Underthese circumstances, we determinethatit 1s appropriate to
`
`terminate this proceeding. We also determinethat it is appropriate to treat
`
`the parties’ settlement agreement (Exhibit 1029) as business confidential
`
`information under 35 U.S.C. §317(b) and 37 C.F.R. § 42.74(c).
`
`This Order doesnot constitute a final written decision under 35 U.S.C.
`
`§ 318(a).
`
`I. ORDER
`
`Accordingly, it 1s
`
`ORDEREDthatthe parties’ Joint Motion to Terminate Proceeding
`
`(Paper 19) is granted;
`
`FURTHER ORDEREDthatthis proceeding is terminated asto all
`
`parties; and
`
`FURTHER ORDEREDthatthe parties’ Joint Request to Treat
`
`Settlement Agreement as Business Confidential Information (Paper 20) is
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`granted to the extent that the parties’ settlement agreement (Exhibit 1029)
`
`shall be treated as business confidential information and be kept separate
`
`from the file of U.S. Patent No. 9,300,432 B2 and made available only under
`
`the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`For PETITIONER:
`
`Walter Renner
`Jeremy Monaldo
`Hyun Jin In
`Karan Jhurani
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jym@fr.com
`in@fr.com
`jhurani@fr.com
`
`For PATENT OWNER:
`
`Chad Walters
`Melissa Muenks
`BAKER BOTTSL.L.P.
`chad. walters@bakerbotts.com
`Melissa. muenks@bakerbotts.com
`
`
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