Petitioner’s request for a refund of certain post-institution fees paid on July 8, 2022 in the above proceeding is hereby granted.

The amount of $22,500.00 has been refunded to Petitioner’s deposit account.

The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board PTACTS System, accessible from the Board Web site at http://www.uspto.gov/PTAB.

Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes review of claims 1–4, 6–12, and 14–16 in U.S. Patent No. 7,957,770 B2 (Exhibit 1001, “the ’770 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 this proceeding is terminated as to all parties; and FURTHER ORDERED that the parties’ Joint Request to Treat Settlement Agreement as Business Confidential Information (Paper 9) is granted, and the parties’ settlement agreement (Exhibit 1015) shall be treated as business confidential information and be kept separate from the file of U.S. Patent No. 7,957,770 B2 and made available only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

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,

Due to the work of more than twenty-six thousand Ericsson research and development employees, Ericsson’s inventions are a valuable part of the fundamental technology used in phones and cellular networks worldwide, providing improved performance and new features for the benefit of consumers.

Ericsson employs approximately ten thousand people in North America, including a substantial number of employees in the United States.

Apple has purposefully and voluntarily placed in the stream of commerce one or more products and/or services that practice the Asserted Patents (as set forth in ¶¶ 15-22 below) with the intention and expectation that they will be purchased and used by consumers in the Western District of Texas.

U.S. Patent No. 7,957,770 (“the ’770 Patent”), entitled “Mobile Communication Terminal for Providing Tactile Interface,” was duly and legally issued to inventors Hyunjun An, Ju-Nam Kim, and Min Hak Lee on June 7, 2011.

U.S. Patent No. 8,792,454 (“the ’454 Patent”), entitled “Secure and Seamless WAN-LAN Roaming,” was duly and legally issued to inventors Kenichi Taniuchi, Tao Zhang, Prathima Agrawal, Ashutosh Dutta, Sunil Madhani, Shinichi Baba, Kensaku Fujimoto, Yasuhiro Katsube, Toshikazu Kodama, and Yoshihiro Ohba on July 29, 2014.