Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes review of claims 1–20 in U.S. Patent No. 6,879,849 B2 (Exhibit 1001, “the ’849 patent”) under 35 U.S.C. §§ 311–319.

On December 16, 2022, after receiving Board authorization, Petitioner and Patent Owner filed a Joint Motion to Terminate Proceeding under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74.

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).

The parties assert that termination “would also further the purpose of inter partes review proceedings, which seek to provide an efficient and less costly alternative forum for patent disputes.” Id. at 2–3.

FURTHER ORDERED that the parties’ Joint Request to Treat Settlement Agreement as Business Confidential Information (Paper 12) is granted to the extent that the parties’ settlement agreement (Exhibit 1024) shall be treated as business confidential information and be kept separate from the file of U.S. Patent No. 6,879,849 B2 and made available only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

Second, Patent Owner asserts that Petitioner “has not established that the cited references disclose or suggest ‘an antenna pattern formed of conductive material located on a specified planar surface of [the] main [PCB],’ as recited in limitation [1a].” Prelim. Resp. 14 (emphasis omitted).

Based on the current record, we disagree with Patent Owner’s assertion that Petitioner “has not established that the cited references disclose or suggest ‘an antenna pattern formed of conductive material located on a specified planar surface of [the] main [PCB],’ as recited in limitation [1a].” See Prelim. Resp. 14.

According to Petitioner, an ordinarily skilled artisan “would have expected that Kojola’s system would likely be subject to the type of external interference addressed by the shielding structures of Lyons” because in both Kojola and Lyons “the antenna is coupled to and placed in close proximity to circuitry components on the same face of the printed circuit board, and thus would have likely

Third, Petitioner asserts that an ordinarily skilled artisan “would have been motivated to include Lyons’s electrically conductive metal housing and ground reference panel in Kojola’s system” because doing so “would have been recognized as simply applying a well-known technique (e.g., incorporating a housing with a ground reference panel to a printed circuit board) to a known system (e.g., Kojola’s mobile communication device) ready for improvement (e.g., Lyons’s teaching of electrically shielding circuit components from external interference)” to “yield predictable results (e.g., to minimize or eliminate external interference and improve signal reception).” Pet. 25–26.

Based on the current record, Petitioner establishes sufficiently for purposes of institution that the combined disclosures in Kojola, Lyons, and Courtney teach a “ground plane compris[ing] a flexible printed circuit board” according to claim 5.

For example, reasonable expenses and attorneys’ fees incurred by any party may be levied 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 before DUE DATE 1.

Unless the Board notifies the parties otherwise, oral argument, if requested, will be held at the Dallas, Texas, USPTO Regional Office.

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.

All practitioners are expected to have a command of the factual record, the applicable law, and Board procedures, as well as the authority to commit the party they represent.

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

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.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2022-00736 Patent 6,879,849 B2 mediation, etc.) was used and the general result.

Julian J. Soltys, Maintaining EMI/RFI Shielding Integrity of Equipment Enclosures with Conductive Gasketing, IEEE International Symposium on Electromagnetic Compatibility (1978) (“Soltys”)

“There are strong public policy reasons to favor settlement between the parties to a proceeding.” Consolidated Trial Practice Guide 86 (Nov. 2019).

First, Apple and Ericsson have met the statutory requirement that they file a “joint request” to terminate before the Office “has decided the merits of the proceeding.” 35 U.S.C. § 317(a).

Apple and Ericsson request that the settlement agreement be treated as business confidential information and be kept separate from the files of this proceeding in accordance with 37 C.F.R. § 42.74(c).

Termination upon settlement, as requested, would also further the purpose of inter partes review proceedings, which seek to provide an efficient Case IPR2022-00736 Attorney Docket No: 50095-0083IP1 and less costly alternative forum for patent disputes.

SEC and SEA, directly and through subsidiaries or intermediaries (including distributors, retailers, and others), have purposefully and voluntarily placed one or more products and/or services in the stream of commerce that practice the Asserted Patents with the intention and expectation that they will be purchased and used by consumers in the Eastern District of Texas.

U.S. Patent No. 7,286,823, entitled “Mobile Multimedia Engine,” was duly and legally issued to inventors Mikael Reinholdsson, Erik Ledfelt, and Johan Svener on October 23, 2007.

U.S. Patent No. 9,313,178, entitled “Method and System for Secure Over-the-top Live Video Delivery,” was duly and legally issued to inventors Kevin J. Ma, Robert Hickey, and Paul Tweedale on April 12, 2016.

The accused electronic devices with wireless connectivity that infringe one or more claims of the ’430 patent include, but are not limited to, at least the Samsung Galaxy S20+5G and Samsung’s The Frame, The Terrace, Q70T, Q80T, Q90T, Q800T, Q900TS, 32Q50, Q60T, TU8000, and TU8300 smart TVs.

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