10952225 (P.T.A.B. Nov. 19, 2015)

Apple Inc.v.ZiiLabs Inc., Ltd.

Patent Trial and Appeal BoardNov 19, 2015

10952225 (P.T.A.B. Nov. 19, 2015)

Trials@uspto.gov Paper 19 Tel: 571.272.7822 Entered: November 19, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD APPLE INC., Petitioner, v. ZIILABS INC., Patent Owner. Case IPR2015-00930 Patent 8,144,156 Before DAVID C. MCKONE, BARBARA A. PARVIS, and PATRICK M. BOUCHER, Administrative Patent Judges. PARVIS, Administrative Patent Judge. DECISION Granting Joint Motion to Terminate 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72, 42.74 On November 16, 2015, and pursuant to 35 U.S.C. § 317(a), the parties filed a joint motion to terminate IPR2015-00930. See Paper 17. Along with the joint motion, the parties filed a twelve-page Settlement and License Agreement (Ex. 1025, “settlement agreement”). The parties represent that they fully resolved all disputes regarding U.S. Patent No. 8,144,156 (“the ’156 Patent”) “via a written agreement.” Paper 17, 2. The IPR2015-00930 Patent 8,144,156 2 parties note, in particular, that their resolution of disputes regarding the ’156 Patent includes this proceeding and disputes between the parties pending in related case ZiiLabs Inc., Ltd. v. Samsung Electronics Co. Ltd., Case No. 2:14-cv-0203 (E.D. Tex.). Id. at 2–3. Id. The parties further represent that Exhibit 1025 is a true and correct copy of the aforementioned “written agreement.” Id. This proceeding is at an early stage. For example, Patent Owner has not yet filed a Patent Owner Response. In view of the early stage of this proceeding, and the concurrent settlement of the dispute between the parties regarding the ’156 Patent pending in the district court lawsuit, we determine that it is appropriate to terminate the proceeding with respect to both parties. See 37 C.F.R. § 42.72. Therefore, the joint motion to terminate this proceeding is granted. This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). The parties also filed in each case a joint request that the settlement agreement be treated as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). See Paper 18. ORDER Accordingly, it is: ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information, to be kept separate from the patent file, is granted; and FURTHER ORDERED that the joint motion to terminate IPR2015- 00930 is granted, and this inter partes review is hereby terminated. IPR2015-00930 Patent 8,144,156 3 PETITIONER: Jeffrey P. Kushan Sidley Austin LLP jkushan@sidley.com Mark A. Dodd Sidley Austin LLP mdodd@sidley.com Michael D. Hatcher Sidley Austin LLP mhatcher@sidley.com PATENT OWNER: Andy Chan Pepper Hamilton LLP chana@pepperlaw.com George Haight Pepper Hamilton LLP haightg@pepperlaw.com William Belanger Pepper Hamilton LLP belangew@pepperlaw.com Andrew Schultz Pepper Hamilton LLP schultza@pepperlaw.com IPR2015-00930 Patent 8,144,156 4 Russell Swerdon Creative Labs, Inc. (Legal Department) Russ_swerdon@creativelabs.com Desmund Gean Creative Labs, Inc. (Legal Department) Desmund_gean@creativelabs.com

Apple Inc. v. ZiiLabs Inc., Ltd.