`Tel: 571-272-7822
`
`Paper10
`Date: December22, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`TOGAIL TECHNOLOGIES LTD.,
`Patent Owner.
`
`IPR2023-00644 (Patent 11,115,165 B2)
`IPR2023-00645 (Patent 10,743,238 B2)
`IPR2023-00721 (Patent 10,972,972 B2)!
`
`Before JAMESON LEE, GREGG I. ANDERSON,and
`SHEILA F. McSHANE,Administrative Patent Judges.
`
`McSHANE,Administrative Patent Judge.
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 CER. $ 42.74
`
`' This Order addressesissues that are the sameinall the proceedings.
`
`
`
`IPR2023-00644(Patent 11,115,165 B2)
`IPR2023-00645 (Patent 10,743,238 B2)
`IPR2023-00721 (Patent 10,972,972 B2)
`
`With the Board’s authorization, Petitioner and Patent Ownerfiled, in
`
`each ofthe captioned proceedings, a Joint Motion to Terminate and a Joint
`
`Request to Keep Agreement Confidential. Papers 8, 9.7 Theparties also
`
`filed the confidential agreementin the respective cases (IPR2023-00644,
`
`Ex. 1021; IPR2023-00645, Ex. 1144; IPR2023-00721, Ex. 1025).
`
`The parties represent that they have settled their disputes in these
`
`proceedingsandin the related district-court litigations and they filed true
`
`copies of their agreementin its entirety. Paper 8, 2—3. Theparties also
`
`represent that there are no other agreements between them made in
`
`connection with or in contemplation ofthe termination ofthese proceedings.
`
`Id. at2. Accordingto the parties, the agreements that they filed contain
`
`confidential information under the Board’srules. Paper 9, 2.
`
`The parties assert that these proceedings should be terminated because
`
`the parties settled all pending disputes concerning the patents at issue and
`
`the Board has not yet decided the merits ofthe proceedings. See Paper8, 4.
`
`Weagree that termination is appropriate forall those reasons. See
`
`Consolidated Trial Practice Guide, 86 (Nov. 2019) (“The Board expects that
`
`a proceeding will terminate after the filing ofa settlement agreement, unless
`
`the Board hasalready decided the merits ofthe proceeding.”).*
`
`? Similar motions werefiled in all the proceedings. See IPR2023-00645,
`Paper 9 (Joint Motion to Terminate), Paper 10 (Joint Request to Keep
`Agreement Confidential); IPR2023-00721, Paper 9 (Joint Motion To
`Terminate), Paper 10 (Joint Request to Keep Agreement Confidential).
`Citations in this order are to the papers in IPR2023-00644.
`> Available at https:/www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2023-00644(Patent 11,115,165 B2)
`IPR2023-00645 (Patent 10,743,238 B2)
`IPR2023-00721 (Patent 10,972,972 B2)
`
`The parties also requestthat the settlement agreement between the
`
`parties be treated as business confidential information. Paper 9,2. We agree
`
`that the agreementfiled in each proceeding contains confidential information
`
`under the Board’s rules, so, accordingly, we grant-in-part the request that the
`
`agreement should be treated as business confidential information under 35
`
`U.S.C. §317(b) and 37 C.F.R. § 42.74(c). See IPR2023-00644, Ex. 1021;
`
`IPR2023-00645, Ex. 1144; IPR2023-00721, Ex. 1025. The Joint Requests
`
`also request that ifa person or entity makes a written request for access to
`
`confidential documents, the parties should be served the written request and
`
`be given the opportunity to respondto the request. Paper 9,2. The panel
`
`does not have a procedure, nor authority, to have served uponthe Parties a
`
`request for access to the Settlement Agreements. So we deny-in-part that
`
`portion ofrequest.
`
`This Order doesnot constitute a final written decision under 35 U.S.C.
`
`§ 318(a).
`
`It is
`
`ORDER
`
`ORDEREDthat the parties’ Joint Motions to Terminate the
`
`Proceedings (IPR2023-00644, Paper 8; IPR2023-00645, Paper 9; IPR2023-
`
`00721, Paper 9) are granted;
`
`FURTHER ORDEREDthatthe parties’ Joint Requests to Keep
`
`Agreement Confidential (IPR2023-00644, Paper 9; IPR2023-00645, Paper
`
`10; IPR2023-00721, Paper 10) are granted-in-part and denied-in-part, as
`
`explained above, and the parties’ confidential agreement (IPR2023-00644,
`
`
`
`IPR2023-00644 (Patent 11,115,165 B2)
`IPR2023-00645 (Patent 10,743,238 B2)
`IPR2023-00721 (Patent 10,972,972 B2)
`
`Ex. 1021; IPR2023-00645, Ex. 1144; IPR2023-00721, Ex. 1025) shall be
`
`treated as business confidential information and be kept separate from the
`
`files ofthe challenged patents and made available only under the provisions
`
`of 35 U.S.C. §317(b) and 37 C.F.R. § 42.74(c); and
`
`FURTHER ORDEREDthat these proceedings are terminated.
`
`
`
`IPR2023-00644(Patent 11,115,165 B2)
`IPR2023-00645 (Patent 10,743,238 B2)
`IPR2023-00721 (Patent 10,972,972 B2)
`
`PETITIONER:
`
`Scott Jarratt
`Andrew Ehmke
`Samuel Drezdzon
`Clint Wilkins
`HAYNES AND BOONE, LLP
`scott jarratt. jpr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`samuel.drezdzon.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Brett Cooper
`BC LAW GROUP,P.C.
`bcooper@bc-lawgroup.com
`
`Robert Auchter
`AUCHTER PLLC
`robert@auchterlaw.com
`
`
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