Apple Inc.v.ContentGuard Holdings, Inc.Download PDFPatent Trial and Appeal BoardJun 16, 201513210153 (P.T.A.B. Jun. 16, 2015) Copy Citation Trials@uspto.gov Paper 20 571-272-7822 Entered: June 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE, INC., Petitioner, v. CONTENTGUARD HOLDINGS, INC., Patent Owner. Case IPR2015-00399 Patent 8,583,556 B2 Before JAMESON LEE, MICHAEL R. ZECHER, and JENNIFER S. BISK, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION Joint Motion to Terminate 37 C.F.R. §§ 42.71(a), 42.72, 42.74 IPR2015-00399 Patent 8,583,556 B2 2 On June 12, 2015, Petitioner (“Apple”) and Patent Owner (“ContentGuard”) filed a Joint Motion to Terminate Proceeding including a request to keep the agreement between them, filed as Exhibit 1027 also on June 12, 2015 (designated as “Parties and Board Only”), as business confidential information under 37 C.F.R. § 317(b) and 37 C.F.R. § 42.74(c). Paper 19 (“Joint Motion”). In their Joint Motion, the parties request termination of the instant proceeding because they have settled their dispute with regard to U.S. Patent No. 8,583,556 B2 (“the ’556 patent”), they have agreed to terminate this inter partes review, and the Office has not yet instituted trial in this proceeding. Mot. 2–3. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, if the settlement agreement includes all parties to the proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The parties filed such a settlement agreement. Ex. 1027. The Joint Motion represents that the settlement resolves the dispute between the parties, with respect to the ’556 patent, in the related district court action as well. Mot. 2. We are persuaded that, under these circumstances, it is appropriate to terminate this preliminary proceeding with respect to both Apple and ContentGuard, without deciding whether or not to institute an inter partes review. See 37 C.F.R. §§ 42.71(a), 42.72. IPR2015-00399 Patent 8,583,556 B2 3 ORDER It is ORDERED that the Joint Motion is granted; FURTHER ORDERED that this proceeding is terminated with respect to both Apple and ContentGuard; and FURTHER ORDERED that the parties’ settlement agreement, Exhibit 1027, will be kept as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). For PETITIONER: Jeffrey Kushan Michael Franzinger Sidley Austin LLP iprnotices@sidley.com For PATENT OWNER: Thomas Lebens Tomothy Malony Fitch, Even, Tabin & Flannery LLP tom@fitcheven.com tpmalo@fitcheven.com Robert Cote McKool Smith LLP rcote@mckoolsmith.com Copy with citationCopy as parenthetical citation