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Apple Inc. v. Lionra Technologies Limited

Docket IPR2023-00796, Patent Trial and Appeal Board (Apr. 5, 2023)
Nathan Engels, Patrick Scanlon, Steven Amundson, presiding
Case TypeInter Partes Review
Patent
7260141
Patent Owner Lionra Technologies Limited
Petitioner Apple Inc.
Assignee LIONRA TECHNOLOGIES LTD.
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11 Termination Decision Post DI Settlement: Termination Decision Post DI Settlement

Document IPR2023-00796, No. 11 Termination Decision Post DI Settlement - Termination Decision Post DI Settlement (P.T.A.B. Jun. 6, 2024)
Before PATRICK R. SCANLON, NATHAN A. ENGELS, and STEVEN M. AMUNDSON, Administrative Patent Judges.
Petitioner Apple Inc. filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–4, 7–10, and 18–22 of U.S. Patent No. 7,260,141 B2 (Ex. 1001, “the ’141 patent”).
The Board issued a Decision granting institution of inter partes review.
After institution, with authorization from the Board, Petitioner and Patent Owner filed a Joint Motion to Terminate this proceeding under 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74.
In consideration of the foregoing, it is hereby: ORDERED that the Joint Motion to Terminate (Paper 9) is granted; FURTHER ORDERED that the Joint Request that Settlement Agreement Be Treated as Business Confidential Information and Be Kept Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 (Paper 10) is granted and the Settlement and License Agreement (Ex. 1032) shall be treated as business confidential information and be kept separate from the files of the ’141 patent and made available only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74; and FURTHER ORDERED that this proceeding is terminated.
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8 Order Other: SCHEDULING ORDER

Document IPR2023-00796, No. 8 Order Other - SCHEDULING ORDER (P.T.A.B. Nov. 13, 2023)
For example, the Board may levy any party’s reasonable expenses and attorneys’ fees on a person who impedes, delays, or frustrates the fair examination of a witness.
To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.
The Board defines a LEAP practitioner as a patent agent or attorney having three (3) or fewer substantive oral arguments in any federal tribunal, including PTAB.
In the Board’s experience, LEAP practitioners often have the best understanding of the facts of the case and the evidence of record, and the Board encourages their participation.
In stipulating to move any due dates in the Scheduling Order, the parties should be aware that the Board requires four weeks after the filing of an opposition to the motion to amend (or the due date for the opposition, if none is filed) for the Board to issue its preliminary guidance, if requested by Patent Owner.
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7 Institution Decision Grant: Institution Decision Grant

Document IPR2023-00796, No. 7 Institution Decision Grant - Institution Decision Grant (P.T.A.B. Nov. 13, 2023)
Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’141 patent.
At this stage, we determine it is unnecessary to construe any terms, but we encourage the parties to directly address issues of claim construction in future briefing.
C. Discretionary Denial Under 35 U.S.C. § 314 Patent Owner’s Preliminary Response asks the Board to exercise its discretion to deny institution under 35 U.S.C. § 314 in view of parallel litigation.
Petitioner argues a person of ordinary skill would have been motivated to incorporate the functionality of Fulton’s rotator in Williams’s digital array processor for several reasons.
Patent Owner will have an opportunity to address Petitioner’s showings during the trial stage, but on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claim 1 as unpatentable in view of the combined teachings of Williams and Fulton.
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5 Notice Notice filing date accorded: Notice NOTICE OF FILING DATE ACCORDED TO PETITION AND TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE

Document IPR2023-00796, No. 5 Notice Notice filing date accorded - Notice NOTICE OF FILING DATE ACCORDED TO PETITION AND TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE (P....
Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.
Patent Owner may also file an election to waive the preliminary response to expedite the proceeding.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
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9 Motion Motion to terminate due to settlement post DI: Joint Motion to Terminate

Document IPR2023-00796, No. 9 Motion Motion to terminate due to settlement post DI - Joint Motion to Terminate (P.T.A.B. Dec. 18, 2023)
Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.74 and the Board’s Case IPR2023-00796 Joint Motion to Terminate authorization by email dated December 15, 2023, Petitioner Apple Inc. (“Apple”) and Patent Owner Lionra Technologies Ltd. (“Lionra”) jointly move to terminate the present inter partes review proceeding as a result of a settlement agreement between Apple and Lionra.
The parties request that the settlement agreement be treated as business confidential information and kept separate from the file of the ’141 patent.
On November 18, 2023, Apple and Lionra entered into a settlement agreement pursuant to which they agreed, among other things, to mutually cooperate to request the termination of this IPR proceeding.
Termination of the instant IPR is appropriate because all parties have settled all pending disputes concerning the ’141 patent and the Board has not yet decided the merits of this proceeding.
For at least these reasons, Apple and Lionra respectfully request that the Board grant this Joint Motion to Terminate the above-captioned IPR proceeding.
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10 Motion Other: Joint Request to Treat Settlement Agreement as Business Confidential Information

Document IPR2023-00796, No. 10 Motion Other - Joint Request to Treat Settlement Agreement as Business Confidential Information (P.T.A.B. Dec. 18, 2023)
Joint Request That Settlement Agreement be Treated as Business Confidential Information
(“Apple”) and Patent Owner Lionra Technologies Ltd. (“Lionra”) jointly request that the settlement agreement between the parties filed concurrently herewith as Ex. 1032, as referenced in the Joint Motion to Terminate Proceeding, be treated as business confidential information and be kept separate from the file of the ’141 patent.
As such, Apple and Lionra hereby jointly request that the agreement be kept as a separate paper to be made available only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Both parties also respectfully request that the Board inform us if anyone seeks production of Exhibit 1032 and afford the parties an opportunity to address whether such request is supported by good cause.
Joint Request That Settlement Agreement be Treated as Business Confidential Information
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6 POPR filed: Patent Owners Preliminary Response

Document IPR2023-00796, No. 6 POPR filed - Patent Owners Preliminary Response (P.T.A.B. Aug. 23, 2023)

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