Maxell, Ltd.

Patent Trials and Appeals Board

Apr 20, 2021

IPR2020-00202 (P.T.A.B. Apr. 20, 2021)

Trials@uspto.gov Paper No. 35
571-272-7822 Entered: April 20, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
MAXELL, LTD.,
Patent Owner.

IPR2020-00199 (Patent 6,329,794 B1)
IPR2020-00200 (Patent 10,084,991 B2)
IPR2020-00202 (Patent 10,212,586 B2)
IPR2020-00204 (Patent 6,928,306 B2)1

Before MICHAEL R. ZECHER, MINN CHUNG, KEVIN C. TROCK, and
JOHN A. HUDALLA, Administrative Patent Judges.2
HUDALLA, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

1 This Order addresses issues that are the same in the identified cases. We
exercise our discretion to issue one Order to be filed in each case. The
parties are not authorized to use this filing style in subsequent papers.
2 This is not an expanded panel decision. Judges Chung, Trock, and Hudalla
are the panel in IPR2020-00199. Judges Zecher, Trock, and Hudalla are the
panel in IPR2020-00200, -00202, and -00204.
IPR2020-00199 (Patent 6,329,794 B1)
IPR2020-00200 (Patent 10,084,991 B2)
IPR2020-00202 (Patent 10,212,586 B2)
IPR2020-00204 (Patent 6,928,306 B2)

2

I. INTRODUCTION
With our authorization, Petitioner and Patent Owner (collectively,
“the Parties”) filed a Joint Motion to Terminate in each of the above-
captioned proceedings due to settlement (“Joint Motions”). Paper 27.3 In
support of the Joint Motions, the Parties filed copies of a Confidential
Settlement and License Agreement, Ex. 1052 (“Settlement Agreement”),4 as
well as corresponding Joint Requests to Keep the Settlement Agreement
Confidential and Separate pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c), Paper 28 (“Joint Requests”).

II. DISCUSSION
In the Joint Motions, the Parties represent that the Settlement
Agreement fully resolves the above-captioned inter partes review
proceedings. Joint Motions 2. The Parties also represent that they have filed
true and accurate copies of the Settlement Agreement and that the Settlement
Agreement represents the entire agreement between the Parties. Id. The
Parties further represent that the related district court case (Maxell, Ltd. v.
Apple Inc.¸ No. 5:19-cv-00036 (E.D. Tex. filed Mar. 15, 2019)) has been
dismissed. Id. at 3. Accordingly, the Parties jointly request termination of
these proceedings. Id. at 4.

3 For purposes of expediency, we cite to papers filed in IPR2020-00199,
unless otherwise noted. The Parties filed similar papers in each of the
above-identified proceedings.
4 For purposes of expediency, we cite to the copy of the Settlement
Agreement filed in IPR2020-00199. The Parties filed the same Settlement
Agreement in each of the above-identified proceedings.
IPR2020-00199 (Patent 6,329,794 B1)
IPR2020-00200 (Patent 10,084,991 B2)
IPR2020-00202 (Patent 10,212,586 B2)
IPR2020-00204 (Patent 6,928,306 B2)

3

The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)5;
see 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Although we have instituted
inter partes review of the challenged patents in these proceedings, we have
not yet decided the merits of these proceedings. Therefore, we determine
that it is appropriate to terminate these proceedings without rendering any
further decisions.
In the Joint Requests, the Parties request to have the Settlement
Agreement treated as business confidential information and to keep it
separate from the files of the respective patents involved in these inter partes
proceedings. Joint Requests 1. After reviewing the Settlement Agreement
between Petitioner and Patent Owner, we find that it 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 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).

5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-00199 (Patent 6,329,794 B1)
IPR2020-00200 (Patent 10,084,991 B2)
IPR2020-00202 (Patent 10,212,586 B2)
IPR2020-00204 (Patent 6,928,306 B2)

4

III. ORDER
Accordingly, for the reasons discussed above, it is
ORDERED that the Joint Motions to Terminate are granted, and the
above-identified proceedings are terminated; and
FURTHER ORDERED that the Joint Requests to Keep the Settlement
Agreement Confidential and Separate are granted, and the Settlement
Agreement shall be kept separate from the files of U.S. Patent Nos.
6,329,794 B1, 10,084,991 B2, 10,212,586 B2, and 6,928,306 B2, and made
available only to Federal Government agencies on written request, or to any
person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c).

IPR2020-00199 (Patent 6,329,794 B1)
IPR2020-00200 (Patent 10,084,991 B2)
IPR2020-00202 (Patent 10,212,586 B2)
IPR2020-00204 (Patent 6,928,306 B2)

5

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

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