Apple Inc.v.Summit 6, LLC

Patent Trial and Appeal Board

Jun 15, 2015

13098090 (P.T.A.B. Jun. 15, 2015)

Trials@uspto.gov Paper No. 15
571.272.7822 Entered: June 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC. and TWITTER, INC.,
Petitioner,

v.

SUMMIT 6 LLC,
Patent Owner.
____________

Case IPR2015-00683
Patent 8,612,515 B2
____________

Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and
KERRY BEGLEY, Administrative Patent Judges.

BEGLEY, Administrative Patent Judge.

JUDGMENT
Termination Pursuant to Settlement
37 C.F.R. §§ 42.5, 42.71, 42.73, 42.74

On June 10, 2015, Petitioners Apple Inc. (“Apple”) and Twitter, Inc.
(“Twitter”) (collectively, “Petitioner”) and Patent Owner Summit 6 LLC
(“Summit 6”) filed a Joint Motion to Terminate. Paper 13. Along with the
motion, the parties filed a copy of two Settlement Agreements, one between
IPR2015-00683
Patent 8,612,515 B2

2
Apple and Summit 6 and another between Twitter and Summit 6, in
accordance with 37 C.F.R. § 42.74(b). Exs. 1029, 1030. The parties also
submitted a Joint Request that the Settlement Agreements be treated as
business confidential information and be kept separate from the files of the
patent-at-issue, pursuant to 37 C.F.R. § 42.74(c). Paper 14. For the reasons
set forth below, the Joint Motion to Terminate and the Joint Request are
granted.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
2012); see 37 C.F.R. § 42.72. In their Joint Motion to Terminate, the parties
indicate that the Settlement Agreements resolve all disputes between them
involving the patent-at-issue in this case, U.S. Patent No. 8,612,515 B2 (“the
’515 patent”). See Paper 13, at 1–2. The motion also points out that this
case is in its initial phase. Id. Summit 6 filed a Preliminary Response on
May 19, 2015, less than one month before the parties filed their joint Motion
to Terminate. The Board has not determined whether to institute inter partes
review pursuant to 35 U.S.C. § 314. Upon consideration of the facts before
us, we determine that it is appropriate to terminate this case and enter
judgment, without rendering either a decision to institute inter partes review
or a final written decision. See 37 C.F.R. §§ 42.5(a), 42.71(a), 42.73(a),
42.74. We, therefore, grant the Joint Motion to Terminate. Id.
We also determine that the parties have complied with the
requirements of 37 C.F.R. § 42.74(c) to have the Settlement Agreements
treated as business confidential information and kept separate from the files
of the ’515 patent. Thus, we grant the Joint Request. Paper 14.
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Patent 8,612,515 B2

3
In addition, given the termination of the case as a result of settlement,
we also dismiss as moot the pending Motion to Seal, filed by Summit 6.
Paper 12. The subject papers of the Motion to Seal, Exhibits 2001, 2002,
2020, 2021, and 2033, are expunged from the record.
ORDER
For the foregoing reasons, it is:
ORDERED that the Joint Request that Apple/Summit 6 and
Twitter/Summit 6 Settlement Agreements Be Treated as Business
Confidential Information and Kept Separate Under 37 C.F.R. § 42.74(c)
(Paper 14) is granted;
FURTHER ORDERED that Summit 6’s Motion to Seal (Paper 12) is
dismissed as moot;
FURTHER ORDERED that Exhibits 2001, 2002, 2020, 2021, and
2033 are expunged; and
FURTHER ORDERED that the Joint Motion to Terminate (Paper 13)
is granted and this case is hereby terminated.

IPR2015-00683
Patent 8,612,515 B2

4
PETITIONER:
Jason D. Eisenberg
Kyle E. Conklin
STERNE, KESSLER, GOLDSTEIN & FOX
jasone-PTAB@skgf.com
kconklin-PTAB@skgf.com

PATENT OWNER:
Peter J. Ayers
John Shumaker
Brian Mangum
LEE & HAYES, PLLC
peter@leehayes.com
jshumaker@leehayes.com
brianm@leehayes.com