Apple Inc.v.Enterprise Systems Technologies, S.a.r.l.

Patent Trial and Appeal Board

May 15, 2015

11105911 (P.T.A.B. May. 15, 2015)

Trials@uspto.gov Paper 10
571-272-7822 Date: May 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE, INC.,
Petitioner,

v.

ENTERPRISE SYSTEMS TECHNOLOGIES, S.A.R.L.,
Patent Owner.
_______________

Case IPR2015-00935
Patent 7,454,201 B2
_______________

Before JAMESON LEE, PATRICK M. BOUCHER, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION

Joint Motion to Terminate
37 C.F.R. § 42.72

IPR2015-00935
Patent 7,454,201 B2

2

On May 6, 2015, counsel for Petitioner, Apple, Inc., and Patent
Owner, Enterprise Systems Technologies, S.A.R.L., jointly sought
authorization to file a motion to terminate this proceeding on the basis that
the parties have reached a settlement agreement. On May 7, 2015, we
granted the parties authorization to file a joint motion to terminate. Paper 6.
The parties subsequently filed their Joint Motion to Terminate Proceedings
Pursuant to 35 U.S.C. § 317 (“Mot.”). Paper 9. Along with their Joint
Motion to Terminate, the parties filed a Joint Request to File Settlement
Agreement as Business Confidential Information Pursuant to 35 U.S.C.
§ 317 (Paper 7), and also filed a copy of a document they describe as a
Settlement and License Agreement (Paper 8).
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
this chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.”
However, 35 U.S.C. § 317(b) also requires that:
[a]ny agreement or understanding between the patent owner and
a petitioner, including any collateral agreements referred to in
such agreement or understanding, made in connection with, or
in contemplation of, the termination of an inter partes review
under this section shall be in writing and a true copy of such
agreement or understanding shall be filed in the Office before
the termination of the inter partes review as between the parties.

In their Joint Motion to Terminate, the parties jointly request
termination of this proceeding pursuant to 35 U.S.C. § 317(a). Mot. 1. The
parties indicate that dismissal is appropriate because the parties have reached
a settlement agreement resolving all issues between them involving the
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patent at issue in this proceeding, and because the Board has not yet decided
the merits of this inter partes review proceeding. Mot. 1–2. The parties also
represent that they have complied with 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(b) by filing a true copy of the confidential settlement agreement
between the parties. Mot. 1. The parties further represent that there are no
“collateral agreements” that would need to be filed pursuant to 35 U.S.C.
§ 317(b) prior to termination of this proceeding. Mot. 1.
We recognize that a trial has not yet been instituted. However, the
considerations are similar. Under these circumstances, we are persuaded
that it is appropriate to terminate this proceeding as to both Petitioner and
Patent Owner without rendering a final written decision. 37 C.F.R. § 42.72.
ORDER
For the foregoing reasons, it is:
ORDERED that the Joint Motion to Terminate Proceedings Pursuant
to 35 U.S.C. § 317 (Paper 9) is GRANTED;
FURTHER ORDERED that this proceeding is hereby terminated as to
both Petitioner and Patent Owner;
FURTHER ORDERED that the parties’ Joint Request to File
Settlement Agreement as Business Confidential Information Pursuant to
35 U.S.C. § 317 (Paper 7) is GRANTED; and
FURTHER ORDERED that the Settlement and License Agreement
(Paper 8) be treated as business confidential information pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and also remain designated as
“Board Only” in PRPS.

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For PETITIONER:

J. Steven Baughman
Marc A. Cavan
ROPES & GRAY LLP
steven.baughman@ropesgray.com
Marc.Cavan@ropesgray.com

For PATENT OWNER:

William Meunier
Matthew Durell
MINTZ, LEVIN, COHEN, FERRIS, GLOVSKY AND POPEO, P.C.
WAMeunier@mintz.com
mdurell@mintz.com