Maxell, Ltd.

Patent Trials and Appeals Board

Apr 9, 2021

IPR2021-00367 (P.T.A.B. Apr. 9, 2021)

Trials@uspto.gov
571-272-7822
Paper No. 8
Entered: April 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

APPLE INC.,
Petitioner,

v.

MAXELL LTD.,
Patent Owner.
____________

IPR2021-00362 (Patent 8,982,086 B2)
IPR2021-00367 (Patent 10,176,848 B2)
IPR2021-00400 (Patent 10,129,590 B2)1
____________

Before MICHAEL R. ZECHER, JASON W. MELVIN, and
FREDERICK C. LANEY, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

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

1 This Decision addresses an issue that is identical in all three cases. We, therefore,
exercise our discretion to issue one Decision to be filed in each case.
IPR2021-00362 (Patent 8,982,086 B2)
IPR2021-00367 (Patent 10,176,848 B2)
IPR2021-00400 (Patent 10,129,590 B2)

2

I. DISCUSSION
On April 8, 2021, with our authorization, Petitioner, Apple Inc. (“Apple”)
and Patent Owner, Maxell Ltd. (“Maxell”), jointly filed the following in each of
the proceedings identified above: (1) a Joint Motion to Terminate under 37 C.F.R.
§ 42.72 (Paper 6, “Mot.”)2; (2) a true copy of the parties’ settlement agreement
(Ex. 1026); and (3) a Joint Motion to Keep Confidential and Separate the parties’
settlement agreement under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 7).
For the following reasons, we grant the parties’ Joint Motions to Terminate and
their joint requests to keep the settlement agreement as business confidential
information.
These proceedings are still in their preliminary stages. On December 23,
2020, Apple filed a Petition requesting an inter partes review of claims 1–4 of
U.S. Patent No. 8,982,086 B2 and a Petition requesting an inter partes review of
claims 8, 10–13, and 15–20 of U.S. Patent No. 10,176,848 B2. IPR2021-00362,
Paper 1; IPR2021-00367, Paper 1. On January 12, 2021, Apple filed a Petition
requesting an inter partes review of claims 1–10 of U.S. Patent No. 10,129,590 B2.
IPR2021-00400, Paper 1. In each proceeding, Maxell has not filed a Patent
Owner’s Preliminary Response and we have not entered a decision whether to
institute an inter partes review.
In the Joint Motion to Terminate, the parties indicate that they “have entered
into a written confidential settlement agreement that fully resolves” their disputes
regarding the involved patents. Mot. 2. The parties represent that “Exhibit 1026 is

2 Unless otherwise noted, all citations are to the papers and exhibits filed in
IPR2021-00362. Similar papers and exhibits were filed in IPR2021-00367 and
IPR2021-00400.

IPR2021-00362 (Patent 8,982,086 B2)
IPR2021-00367 (Patent 10,176,848 B2)
IPR2021-00400 (Patent 10,129,590 B2)

3

a true and accurate copy of the [settlement] agreement between the Parties and
resolves” these proceedings. Id. The parties also represent that Exhibit 1026 is
“the entire agreement or understanding between the Parties made in connection
with, or in contemplation of, the termination of” these proceedings. Id. Lastly, the
parties represent that each Petition is related to a U.S. International Trade
Commission (“ITC”) investigation and a district court case filed in the U.S.
District Court for the Western District of Texas, but both the ITC investigation and
the district court case have been dismissed. Id. at 4.
Under these particular circumstances, we determine that it is appropriate to
dismiss all three Petitions without rendering any further decisions, thereby
terminating these proceedings. See 37 C.F.R. § 42.71(a). We also have reviewed
the true copy of the parties’ settlement agreement, and we determine that good
cause exists to treat this settlement agreement as business confidential information,
and keep it separate from the file of the involved patents, under 37 C.F.R.
§ 42.74(c).

II. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ joint requests to treat the true copy of their
settlement agreement filed in each proceeding as business confidential information,
and to keep separate from the file of the involved patent, under 37 C.F.R.
§ 42.74(c) are granted;
IPR2021-00362 (Patent 8,982,086 B2)
IPR2021-00367 (Patent 10,176,848 B2)
IPR2021-00400 (Patent 10,129,590 B2)

4

FURTHER ORDERED that the following documents shall remain business
confidential information, and shall be kept separate from the file of the involved
patent: (1) IPR2021-00362, Exhibit 1026; (2) IPR2021-00367, Exhibit 1014; and
(3) IPR2021-00400, Exhibit 1031; and
FURTHER ORDERED that the parties’ Joint Motions to Terminate are
granted, and all three Petitions are dismissed resulting in termination of these
proceedings.
IPR2021-00362 (Patent 8,982,086 B2)
IPR2021-00367 (Patent 10,176,848 B2)
IPR2021-00400 (Patent 10,129,590 B2)

5

For PETITIONER:
Jennifer C. Bailey
Adam P. Seitz
Jocelyn D. Ram
ERISA IP, P.A.
Jennifer.Bailey@eriseip.com
Adam.Seitz@eriseip.com
Jocelyn.Ram@eriseip.com
PTAB@eriseip.com

For PATENT OWNER:

Robert G. Pluta
Amanda S. Bonner
James A Fussell
Saqib J. Siddiqui
Mayer Brown LLP
rpluta@mayerbrown.com
asbonner@mayerbrown.com
jfussell@mayerbrown.com
ssiddiqui@mayerbrown.com