`571-272-7822
`
`
`
`
`
`
`
`Paper 14
`Entered: March 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SAINT LAWRENCE COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-01077
`Patent 7,260,521 B1
`_______________
`
`
`
`Before ROBERT J. WEINSCHENK, SCOTT C. MOORE, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Joint Motion to Terminate Proceeding
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential and to Keep Separate
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`Case IPR2017-01077
`Patent 7,260,521 B1
`
`
`Pursuant to our e-mail authorization of February 23, 2018, Apple, Inc.
`(“Petitioner”) and Saint Lawrence Communications, LLC (“Patent Owner”)
`filed a Joint Motion to Terminate Proceeding (Paper 12), requesting pursuant
`to 35 U.S.C. § 317(a) that this proceeding be terminated. The parties also
`submitted a copy of their Settlement and License Agreement (Ex. 2024), and
`filed a Joint Request to Treat Settlement Agreement as business Confidential
`and to Keep Separate (Paper 13).
`The Petition in this proceeding was filed on March 13, 2017. Paper 2.
`We issued our Institution Decision on October 16, 2017. Paper 7. Patent
`Owner filed its Response on January 8, 2018. Paper 11. The deadline for
`Petitioner’s Reply is March 26, 2018 (Paper 8, 7), and Petitioner has not yet
`filed a Reply. Oral argument (if requested) is scheduled for June 12, 2018.
`Id.
`
`In their Joint Motion to Terminate, the parties represent that their
`Settlement and License Agreement provides for the termination of this
`proceeding and related district court litigation involving U.S. Patent
`7,260,521 B1. Paper 12, 3. The parties also represent that Exhibit 2024 is a
`true and correct copy of their Settlement and License Agreement, and that
`there are no collateral agreements or understandings made in connection
`with, or in contemplation of, the termination of this proceeding. Id. at 3–4.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” The
`parties have filed their Settlement and License Agreement as required by
`
`
`
`2
`
`
`
`Case IPR2017-01077
`Patent 7,260,521 B1
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). On this record, we find that
`termination as to Petitioner is appropriate.
`The parties also request termination as to Patent Owner. The Board is
`not a party to the Settlement and License Agreement, and has authority to
`proceed and issue a final written decision. 35 U.S.C. § 317(a), 37 C.F.R.
`§ 42.74(a). In view of the early stage of this proceeding and the other
`circumstances present here, however, we agree that termination as to Patent
`Owner also is appropriate. Indeed, there are strong public policy reasons to
`favor settlement between the parties to a proceeding. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). We
`determine that it is appropriate to terminate this proceeding without
`rendering a final written decision. See 37 C.F.R. § 42.72.
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate Proceeding (Paper 12)
`is granted, and this proceeding is hereby terminated; and
`FURTHER ORDERED that the Joint Request to Treat Settlement
`Agreement as Business Confidential and to Keep Separate (Paper 13) is
`granted, that Exhibit 2024 remain designated as “Parties and Board Only” in
`the Board’s filing system, and that Exhibit 2024 be kept separate from the
`file of U.S. Patent 7,260,521.
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2017-01077
`Patent 7,260,521 B1
`
`For PETITIONER:
`Andrew S. Ehmke
`Scott T. Jarratt
`Aaron C. Taggart
`Jamie McDole
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`scott.jarratt.ipr@haynesboone.com
`aaron.taggart@haynesboone.com
`jamie.mcdole@haynesboone.com
`
`
`For PATENT OWNER:
`Gregory Gonsalves
`GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`Masood Anjom
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`
`
`
`
`4
`
`
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