Maxell, Ltd.

Patent Trials and Appeals Board

Apr 23, 2021

IPR2021-00047 (P.T.A.B. Apr. 23, 2021)

Trials@uspto.gov Paper: 8
571-272-7822 Date: April 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,

v.
MAXELL, LTD.,
Patent Owner.

IPR2021-00047
Patent 7,203,517 B2

Before LYNNE E. PETTIGREW, MINN CHUNG, and
FREDERICK C. LANEY, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2021-00047
Patent 7,203,517 B2

2

I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively, “the Parties”) filed a Joint Motion to Terminate in the above-
identified proceeding due to settlement. Paper 6 (“Joint Motion”). In
support of the Joint Motion, the Parties filed a Confidential Settlement and
License Agreement, Ex. 1019 (“Settlement Agreement”), as well as a Joint
Request to Treat Agreement as Business Confidential pursuant to 37 C.F.R.
§ 42.74(c), Paper 7 (“Joint Request”).
II. DISCUSSION
This proceeding is in the preliminary stage, and no decision whether
to institute a trial has been made. In the Joint Motion, the Parties represent
that the Settlement Agreement fully resolves the above-captioned
proceeding. Joint Motion 2. The Parties also represent that they have filed a
true and accurate copy of the Settlement Agreement and that the Settlement
Agreement represents the entire agreement or understanding between the
Parties made in connection with, or in contemplation of, the termination of
this proceeding. Id. The Parties further represent that the related district
court case (Maxell, Ltd. v. Apple Inc., No. 6:20-cv-00646 (W.D. Tex.)) and
ITC proceeding (Maxell, Ltd. v. Apple Inc., Inv. No. 337-TA-1215 (ITC))
have been dismissed. Id. at 4. The Parties further represent that there exist
no other currently pending Patent Office proceedings between the Parties
involving U.S. Patent No. 7,203,517 B2 (Ex. 1001, “the ’517 patent”). Id.
Under these circumstances, we determine that it is appropriate to dismiss the
Petition (Paper 1) and terminate this proceeding. See 37 C.F.R. §§ 42.71(a),
42.74(a).
IPR2021-00047
Patent 7,203,517 B2

3

In the Joint Request, the Parties request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
files of the patent involved in this inter partes proceeding. Joint Request 1.
After reviewing the Settlement Agreement between Petitioner and Patent
Owner, we find that the Settlement Agreement contains confidential
business information regarding the terms of settlement. We determine that
good cause exists to treat the Settlement Agreement between Petitioner and
Patent Owner as business confidential information pursuant to 37 C.F.R.
§ 42.74(c).
III. ORDER
Accordingly, for the reasons discussed above, it is
ORDERED that the Parties’ Joint Motion to Terminate is granted;
FURTHER ORDERED that the Petition is dismissed and this
proceeding is terminated as to all parties;
FURTHER ORDERED that the Joint Request to Treat the Settlement
Agreement as Business Confidential is granted; and
FURTHER ORDERED that the Settlement Agreement (Ex. 1019)
shall be kept separate from the file of the ’517 patent, and made available
only to Federal Government agencies on written request, or to any person on
a showing of good cause, pursuant to 37 C.F.R. § 42.74(c).

IPR2021-00047
Patent 7,203,517 B2

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PETITIONER:
Adam P. Seitz
Paul R. Hart
ERISE IP, P.A.
adam.seitz@eriseip.com
paul.hart@eriseip.com

PATENT OWNER:
Robert G. Pluta
Amanda S. Bonner
James A. Fussell
William J. Barrow
Saqib J. Siddiqui
Mayer Brown LLP
asbonner@mayerbrown.com
rpluta@mayerbrown.com
jfussell@mayerbrown.com
wbarrow@mayerbrown.com
ssiddiqui@mayerbrown.com