Apple Inc.v.Nonend Inventions N.V.

Patent Trial and Appeal Board

Feb 26, 2016

12797139 (P.T.A.B. Feb. 26, 2016)

Trials@uspto.gov Paper No. 8
571-272-7822 Entered: February 26, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

NONEND INVENTIONS, N.V.,
Patent Owner.
____________

Case IPR2016-00302
Patent 8,090,862 B2
____________

Before MICHAEL W. KIM, JENNIFER S. BISK, and
DANIEL N. FISHMAN, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION
Dismissing Petition Pursuant To Settlement
37 C.F.R. §§ 42.5(a), 42.71(a)
IPR2016-00302
Patent 8,090,862 B2
2

On February 25, 2016, the parties filed a “Joint Motion to Terminate”
“in light of the parties’ resolution of their dispute relating to [the patent at
issue] and the executed written agreement regarding the parties’ resolution.”
Paper 6, 1.1 The parties concurrently filed a copy of that executed written
agreement (Ex. 2001) along with a “Joint Request to Treat the Settlement
Agreement as Business Confidential Information.” Paper 7; see also
37 C.F.R. § 42.74(c) (“A party to a settlement may request that the
settlement be treated as business confidential information and be kept
separate from the files of an involved patent or application.”).
Patent Owner has not filed a preliminary response in this proceeding,
and we have not considered the merits of the Petition. Under these
circumstances, we determine that it is appropriate to dismiss the Petition.
See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does not constitute a final
written decision pursuant to 35 U.S.C. § 318(a).

Accordingly, it is:
ORDERED that the Petition in this proceeding is dismissed; and
FURTHER ORDERED that the settlement agreement, Exhibit 2001,
be treated as business confidential information and be kept separate from the
files of the involved U.S. Patent No. 8,090,862 B2.

1 The parties style this a “Motion to Terminate” pursuant to 35 U.S.C. § 317.
The parties do not, however, explain how § 317, which refers to “[a]n inter
partes review instituted under this chapter,” applies explicitly to this
situation, in which an institution decision has not yet been rendered.
IPR2016-00302
Patent 8,090,862 B2
3

PETITIONER:
Andrew S. Ehmke
andy.ehmke.ipr@haynesboone.com

Scott T. Jarratt
scott.jarratt.ipr@haynesboone.com

PATENT OWNER:
Matthew J. Antonelli
matt@ahtlawfirm.com