`Filed: June 9, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2020-00209
`U.S. Patent No. 10,213,113
`
`––––––––––––––––––
`
`AMENDED JOINT MOTION TO TERMINATE
`
`
`
`
`
`
`
`
`IPR2020-00209
`
`U.S. Patent No. 10,213,113
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Bergh v. Dept. of Transp.,
`794 F.2d 1575 (Fed. Cir. 1986), cert. denied, 479 U.S. 950 (1986) .................... 2
`Cheyenne River Sioux Tribe v. U.S.,
`806 F.2d 1046 (Fed. Cir. 1986) ............................................................................ 2
`Delta Air Lines, Inc. v. August,
`450 U.S. 346 (1981) .............................................................................................. 2
`Omni MedSci, Inc. v. Apple Inc.,
`No. 19-cv-5673-YGR (N.D. Cal.) (pending) .................................................... 1, 3
`Statutes
`35 U.S.C. § 317 .......................................................................................................... 3
`35 U.S.C. § 317(a) ............................................................................................. 1, 2, 3
`Other Authorities
`37 C.F.R. § 42.20(b) .................................................................................................. 1
`37 C.F.R. § 42.74 ....................................................................................................... 1
`77 Fed. Reg. 48,680, 48,686 (Aug. 14, 2012) ................................................... 1, 2, 3
`
`i
`AMENDED JOINT MOTION TO TERMINATE
`
`
`
`IPR2020-00209
`
`U.S. Patent No. 10,213,113
`
`In response to the Board’s Order (Paper No. 11), and pursuant to 35 U.S.C. §
`
`317(a) and 37 C.F.R. § 42.74, Apple Inc. (“Petitioner”) and Patent Owner Omni
`
`MedSci, Inc. (“Patent Owner”) jointly request termination of this inter partes
`
`review (IPR) of 10,213,113 (“’113 patent”), Case No. IPR2020-00209, and
`
`termination of the proceeding with respect to Petitioner. The parties note that the
`
`Decision on Institution is pending.
`
`The Board’s Order denied the parties’ previous joint motion to terminate
`
`(Paper No. 9) and authorized the parties to file this amended motion on June 5,
`
`2020. The parties have reached a settlement agreement regarding the ’113 patent
`
`and have agreed to terminate this IPR2020-00209, filed by Apple. Ex. 1067. The
`
`parties certify that this settlement agreement (Ex. 1067) represents the complete
`
`agreement, including all terms and conditions, between the parties and includes all
`
`(and there are no other) collateral agreements or understandings made in
`
`connection with, or in contemplation of, the termination of this proceeding as
`
`required by 35 U.S.C. § 317(b). No other IPRs are known to be pending against
`
`the ’113 patent.
`
`Termination of this proceeding is proper for at least the following reasons:
`
`•
`
`In the district court litigation, Omni MedSci, Inc. v. Apple Inc., No.
`
`19-cv-5673-YGR (N.D. Cal.) (pending), the Court has dismissed the
`
`1
`
`AMENDED JOINT MOTION TO TERMINATE
`
`
`
`IPR2020-00209
`
`U.S. Patent No. 10,213,113
`
`parties respective claims and counterclaims pertaining to the ’113
`
`patent. No other cases involve the ’113 patent, and the parties do not
`
`contemplate any litigation or proceeding involving the subject patent
`
`in the foreseeable future.
`
`•
`
`The parties are jointly requesting termination. 77 Fed. Reg. 48,756,
`
`48,768 (Aug. 14, 2012) (“There are strong public policy reasons to
`
`favor settlement between the parties to a proceeding.”) (emphasis
`
`added). Both Congress and the federal courts have expressed a strong
`
`interest in encouraging settlement in litigation. See, e.g., Delta Air
`
`Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed.
`
`R. Civ. P.] 68 is to encourage the settlement of litigation.”); Bergh v.
`
`Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law
`
`favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
`
`Federal Circuit places a particularly strong emphasis on settlement.
`
`See Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed.
`
`Cir. 1986) (noting that the law favors settlement to reduce antagonism
`
`and hostility between parties). Here, no public interest or other
`
`factors weigh against termination of this proceeding.
`
`2
`
`AMENDED JOINT MOTION TO TERMINATE
`
`
`
`IPR2020-00209
`
`U.S. Patent No. 10,213,113
`
`•
`
`The Board has not yet “decided the merits of the proceeding before
`
`the request for termination is filed.” 35 U.S.C. § 317(a) (emphasis
`
`added); 77 Fed. Reg. 48,768 (“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.”). The Board
`
`has not yet made a decision on institution of this inter partes review.
`
`Apple Inc. filed its petition for inter partes review on December 11,
`
`2019. No Motions are outstanding in this proceeding. No other
`
`party’s rights will be prejudiced by the termination of this inter partes
`
`review. This supports the propriety of terminating this proceeding
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`even though the settlement and termination provisions of 35 U.S.C. §
`
`317, on their face, apply only to “instituted” proceedings. 77 Fed.
`
`Reg. 48,680, 48,686 (Aug. 14, 2012) (And 35 U.S.C. 317(a) provides
`
`“An inter partes review instituted under this chapter shall be
`
`terminated with respect to any petitioner upon the joint request of the
`
`petitioner and the patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.”)
`
`•
`
`The District Court in Omni MedSci, Inc. v. Apple Inc., No. 4:19-cv-
`
`05673-YGR (pending) granted the parties motion to dismiss the ’113
`
`3
`
`AMENDED JOINT MOTION TO TERMINATE
`
`
`
`IPR2020-00209
`
`U.S. Patent No. 10,213,113
`
`patent on May 21, 2020. The settlement also calls for Omni MedSci,
`
`Inc. and Apple Inc. to jointly request termination of the proceeding
`
`before the Board involving the ’113 patent (i.e., IPR2020-00209).
`
`The parties are concurrently moving to terminate the following proceeding
`
`that related to the ’113 patent:
`
`Apple Inc. v. Omni MedSci, Inc., IPR2020-00029 (PTAB Dec. 11, 2019).
`
`The settlement agreement between the parties has been made in writing, and
`
`a true and correct copy was already filed as Exhibit 1067.
`
`
`
`Dated: June 9, 2020
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, D.C. 20005
`Counsel for Petitioner
`
`/Thomas A. Lewry/
`Thomas A. Lewry
`Registration No. 30,770
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Counsel for Patent Owner
`
`
`
`
`
`
`4
`
`AMENDED JOINT MOTION TO TERMINATE
`
`
`
`IPR2020-00209
`
`U.S. Patent No. 10,213,113
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the Amended Joint Motion to
`
`Terminate Pursuant to 35 U.S.C. § 317 was served on June 9, 2020, by e-mail
`
`directed to counsel of record for the Patent Owner as follows:
`
`
`
`Thomas A. Lewry
`John S. LeRoy
`Robert C.J. Tuttle
`John M. Halan
`Christopher C. Smith
`Andrew B. Turner
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Telephone: (248) 358-4400
`OMSC0118IPR1@brookskushman.com
`
`Dated: June 9, 2020
`
`Respectfully submitted,
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan (Reg. No. 43,401)
`Sidley Austin LLP
`Counsel for Petitioners
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`AMENDED JOINT MOTION TO TERMINATE
`
`
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