Apple Inc.v.ZiiLabs Inc., LTD.Download PDFPatent Trial and Appeal BoardJan 8, 201608640513 (P.T.A.B. Jan. 8, 2016) Copy Citation Trials@uspto.gov Paper 12 Tel: 571.272.7822 Entered: January 8, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD APPLE INC., Petitioner, v. ZIILABS INC., Patent Owner. Case IPR2015-00931 Patent 5,835,096 Before GLENN J. PERRY, TREVOR M. JEFFERSON, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. JEFFERSON, 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 IPR2015-00931. Paper 10. Along with the joint motion, the parties filed a Settlement and License Agreement (Ex. 1025, “settlement agreement”). The parties represent that they fully resolved all disputes regarding U.S. Patent No. 5,835,096 (“the ’096 Patent”) “via a written agreement.” Paper 10, 2 (citing Ex. 1025, 1–12). The parties IPR2015-00931 Patent 5,835,096 2 note, in particular, that their resolution of disputes regarding the ’096 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 in that 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 ’096 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). Paper 11. We grant the parties’ request. 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- 00931 is granted, and this inter partes review is hereby terminated. IPR2015-00931 Patent 5,835,096 3 PETITIONER: Jeffrey P. Kushan Mark A. Dodd Michael D. Hatcher Sidley Austin LLP jkushan@sidley.com mdodd@sidley.com mhatcher@sidley.com PATENT OWNER: Andy Chan George Haight William Belanger Andrew Schultz Pepper Hamilton LLP chana@pepperlaw.com haightg@pepperlaw.com belangew@pepperlaw.com schultza@pepperlaw.com Russell Swerdon Desmund Gean Creative Labs, Inc. (Legal Department) Russ_swerdon@creativelabs.com Desmund_gean@creativelabs.com Copy with citationCopy as parenthetical citation
