Trials@uspto.gov
`571-272-7822
`
`sO
`
`Paper 57
`Date: August 2, 2022
`
`"UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`Vv.
`
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)!
`
`Before PATRICKR. SCANLON, DAVID C. MCKONE,
`GREGGI. ANDERSON, and NORMAN H. BEAMER,
`Administrative Patent Judges.”
`
`ANDERSON,Administrative Patent Judge.
`
`.
`TERMINATION
`Dueto Settlement After Institution ofTrial
`35 US.C. $317; 37 CFR: § 42.74
`
`' This Order addresses issues that are the same in all identified proceedings.
`Weexercise our discretion to issue one Order to be filed in each proceeding.
`_ The parties, however, are not authorized to use- this style heading in
`subsequent papers.
`* This is not an expanded panel. Rather, the fourlisted judges represented
`overlapping three-judge panels on the above-captioned proceedings. —
`
`
`571-272-7822
`
`sO
`
`Paper 57
`Date: August 2, 2022
`
`"UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`Vv.
`
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)!
`
`Before PATRICKR. SCANLON, DAVID C. MCKONE,
`GREGGI. ANDERSON, and NORMAN H. BEAMER,
`Administrative Patent Judges.”
`
`ANDERSON,Administrative Patent Judge.
`
`.
`TERMINATION
`Dueto Settlement After Institution ofTrial
`35 US.C. $317; 37 CFR: § 42.74
`
`' This Order addresses issues that are the same in all identified proceedings.
`Weexercise our discretion to issue one Order to be filed in each proceeding.
`_ The parties, however, are not authorized to use- this style heading in
`subsequent papers.
`* This is not an expanded panel. Rather, the fourlisted judges represented
`overlapping three-judge panels on the above-captioned proceedings. —
`
`
`
`_
`
`IPR2021-00592(Patent 10,469,934 B2)
`1PR2021-00600 (Patent10,298,451 B1)
`
`'
`
`LL INTRODUCTION
`Petitioner andPatentOwner (“Parties”)have requestedthat the above-
`identified inter‘partes review proceedings (592 IPR”and “’600 IPR,”
`respectively)be terminated. "592:IPR, Paper 54; °600 IPR, Paper 473 On
`July 27, 2022, we authorized via email the Parties to file joint motions to
`terminate the above-identified proceedings. On July-28, 2022, the Parties
`- filed a Joint Motion to Terminate in each ofthe above-identified proceedings |
`(“Motions”).* Id. Along with the Motions,the Parties filed a copy of a
`Settlement and License Agreement ineach ofthe above-identified = -
`proceedings (“Settlement:Agreement”). ~?592 IPR, Exs. 20532054 (Ex. A.
`- to Settlement Agreement);°600 IPR, Exs. 2030, 2031 (Ex. A to Settlement |
`| Agreement) The Partiesalso'filed a Joint Request that theSettlement
`-
`. Agreement be treatedasbusiness confidential information and kept separate
`fromthefileofthe involved patent and be pursuant to 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c) in each ofthe above-identified.proceedings (“Joint »
`Requests”). "592 IPR, Paper 55;7600 IPR, Paper48.
`II. DISCUSSION
`In the Motions, the Parties represent that they havereached an
`_ agreementtojointly seek termination ofthe above-identified interpartes
`review proceedings, tthe SettlementAgreement constitutesthe entire
`
`|
`
`3 Citations are to Papers and Exhibits filedin IPR2021-00592, unless
`_. otherwiseindicated. Parties filed asimilar paper in IPR2021-00600.
`Paper 47.
`.
`4 The Motionsrequesttermination “[phursuant to35U.S.C. § 327(a),”
`So Paper 54, 1. 35 U.S.C.§ 327(a) applies to settlement for post-grant review.
`35U.S.C. §3 17(a) applies to settlement forinterpartes review, the type of
`proceeding at issue here. We deem this harmlesserror and understand the
`_. parties to request termination pursuant to 35 U.S.C. §317(a).
`
`2
`
`
`
`_IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600(Patent 10,298,451 B1)
`: understanding and agreement between the Parties, and true copies ofthe
`SettlementAgreement have been filed. "592 IPR, Paper 54, 1; "600 IPR,
`Paper 47, The Parties further represent that the Settlement Agreement
`resolvesall currently pending Patent Office and District Court proceedings |
`. between the Parties involvingPatent 10,469934 B2 in the 592 IPR and
`Patent 10,298,451 Bl in the7600 IPR.
`‘592 IPR, Paper 54,1; 600 IPR,
`Paper 47.
`|
`ae
`_
`:
`Weinstituted a trialiin the 592 IPR on August 23, 2021 (Paper9) and
`instituted a trial in the "600IPRon September 1, 2021 (Paper 9). Wehave
`‘not yet decided the merits on all claims and grounds for either ofthese
`proceedings, andafinal:written decision addressing all claims and grounds
`_has not been entered‘inthese proceedings. Notwithstanding that these
`. proceedings have moved beyond the preliminary stage, the Parties have:
`shown adequately that the.termination oftheseproceedingsiis appropriate.
`Underthese circumstances, we determine that good cause exists to terminate
`these proceedingswith respectto theParties.
`a
`The Partiesalso filed Joint Requeststhat theSettlement Agreement be ,
`treated as business confidential information and be kept separate from the. -
`files ofthepatents involved inthese interpartes proceedings. °592 IPR,
`Papers 55, 56; 600 IPR, Papers 48,49. After reviewingtheSettlement
`Agreement betweenPetitioner andPatent Owner,we find that the Settlement
`Agreementcontainsconfidential businessinformation regarding the terms of
`settlement. We determine that good cause existsto treat the Settlement.
`7 ‘Agreement asbusiness confidential informationpursuant to
`—-35US.C.§ 317(b)and37C.F.R.§ 42.74().
`ThisOrderdoes not constitute a final written decision pursuantto:35
`USL. §318(@).
`
`-.
`
`
`
`1PR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)
`
`Ill. ORDER
`
`mo
`Accordingly, itis
`_ ORDERED that the Joint Motionsto Terminate the above-identified .
`proceedings are granted and the above-identified proceedings are terminated
`. with respect to Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a)
`and 37CFR. § 42.72;
`FURTHER ORDERED that the Joint Requests that the Settlement
`_Agreement, including Exhibit Aattached thereto, be treated as business
`confidential information and kept separateare granted, andthe Settlement
`Agreement shall bekept separate from the files ofPatent 10,298,451 B1 and
`Patent 10,469,934 B2, and madeavailable only to Federal Government
`agencies onwritten request, or to any person on a:showingofgood cause,
`pursuant to 35 U.S.C..§317(b) and 37 C.F.R. § 42.74(0).
`
`
`
`IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)
`
`FOR PETITIONER:
`
`Walter Renner
`David Holt
`Ryan Chowdhury
`FISH & RICHARDSONP.C.
`Axf-ptab@fr.com.
`Devoto@fr.com
`rchowdhury@fr.com
`
`FOR PATENT OWNER:
`
`Mark Knedeisen
`Lauren Murray
`Brian Bozzo
`K & L GATES LLP
`Mark.knedeisen@klgates.com
`Lauren.murray@klgates.com
`Brian.bozzo@klgates.com
`
`
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