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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM, INC.
`Petitioner
`
`v.
`
`APPLE INC.
`Patent Owner
`____________
`
`Case IPR2019-00322
`Patent 8,443,216
`____________
`
`
`JOINT MOTION TO DISMISS PROCEEDING
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`
`
`
`
`
`
`Joint Motion To Dismiss Proceeding
`Case: IPR2019-00322
`
`
`The Patent Owner Apple Inc. (“Apple”) and Petitioner Qualcomm, Inc.
`
`
`
`
`(“Qualcomm”) (collectively “Parties”) hereby jointly move for an order dismissing
`
`the inter partes review, pursuant to the terms of their Settlement Agreement, dated
`
`April 16, 2019. The Board provided written authorization by email to file this
`
`motion to dismiss on April 29, 2019.
`
`The IPR Proceeding relates to a petition for inter partes review filed
`
`November 12, 2018, directed to Patent No. 8,443,216 (the “216 patent”), and
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`assigned case number IPR2019-00322. Patent Owner filed a Preliminary Response
`
`on April 10, 2019. (Paper No. 6.) The Office has not reached a decision on
`
`instituting this petition.
`
`The Parties have settled their dispute, and have reached agreement to
`
`dismiss this IPR Proceeding. The Parties’ Settlement Agreement has been made in
`
`writing, and a true copy of the same is attached as Exhibit 1019.
`
`In addition, the Parties desire that the Settlement Agreement be maintained
`
`as business confidential information under 37 C.F.R. § 42.74(c), and a separate
`
`joint request to that effect is being filed concurrently herewith.
`
`1. Reasons Why Dismissal Is Appropriate
`
`Dismissal is proper because the Parties are jointly requesting dismissal, the
`
`review is still in its early stages, and the Office has not yet “decided the merits of
`
`
`
`1
`
`
`
`the proceeding before the request for termination is filed.” As noted in the Patent
`
`Joint Motion To Dismiss Proceeding
`Case: IPR2019-00322
`
`
`
`Office Trial Practice Guidelines, “there are strong public policy reasons to favor
`
`settlement between the parties to a proceeding . . . . The Board expects that a
`
`proceeding will terminate after the filing of a settlement agreement, unless the
`
`Board has already decided the merits of the proceeding.”1 Accordingly, dismissal
`
`is appropriate here.
`
`The Parties understand that if the Board dismisses this inter partes review
`
`with respect to Petitioner, no estoppel under section 315(e) will attach to Petitioner
`
`on the basis of this inter partes review. The Parties also understand that if the Board
`
`dismisses this inter partes review with respect to Petitioner before a final written
`
`decision on patentability, no estoppel will attach to Petitioner under 37 C.F.R. §
`
`42.73(d)(1). The Parties understand that if the Board dismisses this inter partes
`
`review before a final written decision on patentability, no preclusion will attach to
`
`Patent Owner under 37 C.F.R. § 42.73(d)(3).
`
`As authorized by email on April 29, 2019, a true copy of the Settlement
`
`Agreement made in connection with, or in contemplation of, the dismissal of this
`
`inter partes review is being contemporaneously filed herewith as Exhibit 1019. A
`
`
`1 See Federal Register Vol. 77, No. 157 at 48768.
`2
`
`
`
`
`
`Joint Motion To Dismiss Proceeding
`Case: IPR2019-00322
`
`
`joint request to treat this agreement as business confidential information and to keep
`
`it separate from the files of the ’216 patent is being filed concurrently.
`
`2.
`
`Parties In Related Litigation Involving the Patent At-Issue
`
`The ’216 patent is asserted in Qualcomm, Inc. v. Apple Inc. 3:17-cv-01375-
`
`DMS-MDD (“the 1375 Litigation”). The Parties to this proceeding are also the only
`
`parties to the 1375 Litigation.
`
`3.
`
`Related Proceedings Currently Before the Office
`
`The Parties are unaware of any other proceedings involving the ’216 patent
`
`that are currently before the Office.
`
`There are a number of proceedings involving the Parties and other patents
`
`asserted in the 1375 Litigation, as listed in Table 1 below. The Parties have or will
`
`also be jointly moving to dismiss the additional proceedings listed in Table 1.
`
`Patent
`8,098,534
`7,760,559
`7,355,905
`7,383,453
`8,433,940
`8,271,812
`8,656,196
`
`TABLE 1
`IPR No(s).
`IPR2019-00270
`IPR2019-00274
`IPR2019-00276
`IPR2019-00296
`IPR2019-00297
`IPR2019-00321
`IPR2019-00325
`
`There are also a number of proceedings before the Office involving other
`
`
`
`patents at issue in the 1375 Litigation, but for which Intel Corporation is the
`
`
`
`3
`
`
`
`Joint Motion To Dismiss Proceeding
`Case: IPR2019-00322
`
`
`Petitioner, as listed in Table 2. The settlement between Qualcomm and Apple does
`
`not resolve the proceedings listed in Table 2.
`
`TABLE 2
`
`Patent
`9,535,490
`9,535,490
`9,535,490
`9,535,490
`9,535,490
`9,608,675
`9,608,675
`9,608,675
`9,608,675
`9,608,675
`9,608,675
`8,838,949
`8,698,558
`8,698,558
`8,698,558
`8,698,558
`
`
`IPR No(s).
`IPR2018-01344
`IPR2018-01346
`IPR2018-01261
`IPR2018-01293
`IPR2018-01295
`IPR2018-01326
`IPR2018-01327
`IPR2018-01328
`IPR2018-01329
`IPR2018-01330
`IPR2018-01340
`IPR2018-01334
`IPR2018-01152
`IPR2018-01153
`IPR2018-01154
`IPR2018-01240
`
`4.
`
`Status of Related District Court Litigation
`
`The ’216 patent was at issue in the 1375 Litigation. On April 23, 2019, the
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`District Court dismissed the Parties respective claims and counterclaims with
`
`prejudice in the related 1375 Litigation. There are no other pending litigations or
`
`any other proceedings between the Petitioner and Patent Owner relating to the ’216
`
`patent.
`
`
`
`4
`
`
`
`For the foregoing reasons, the Parties jointly request dismissal of IPR No.
`
`Joint Motion To Dismiss Proceeding
`Case: IPR2019-00322
`
`
`
`IPR2019-00322.
`
`
`
`Date: 4/30/2019
`
`
`
`
`
`
`
`
`Date: April 30, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`For Patent Owner, Apple Inc.
`
`
`
` /John A. Marlott/
`John A. Marlott, Reg. No. 37,031
`Jones Day
`77 West Wacker Drive
`Chicago, IL 60601
`T: 312-269-4236
`For Petitioner, Qualcomm, Inc.
`
`
`
`5
`
`
`
`Joint Motion To Dismiss Proceeding
`Case: IPR2019-00322
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
`
`certifies that on April 30, 2019, a copy of Joint Motion to Dismiss Proceeding and
`
`Joint Request to File Settlement Agreement as Business Confidential Information
`
`Pursuant to 37 C.F.R. § 42.74(c) were provided via email, to Patent Owner by
`
`serving the email correspondence addresses of record as follows:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Timothy W. Riffe
`Fish & Richardson P.C.
`
`Email: IPR39521-0069IP1@fr.com
`Email: PTABInbound@fr.com
`Email: axf-ptab@fr.com
`Email: renner@fr.com
`Email: rozylowicz@fr.com
`Email: riffe@fr.com
`
` /John A. Marlott/
`John A. Marlott, Reg. No. 37,031
`Jones Day
`77 West Wacker Drive
`Chicago, IL 60601
`T: 312-269-4236
`
`6
`
`
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