`571-272-7822
`
`Paper No. 13
`Date Entered: June 17, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`IPR2020-00209
`Patent 10,213,113 B2
`____________
`
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`IPR2020-00209
`Patent 10,213,113 B2
`
`
`As authorized in our order of June 5, 2020 (Paper 11), the parties have
`filed an Amended Motion to Terminate this proceeding. Paper 12
`(“Amended Motion to Terminate”). In the Amended Motion to Terminate
`the parties note that in the district court they dismissed their respective
`claims and counterclaims concerning the patent that is the subject of this
`proceeding. Amended Mot. to Terminate, 1–2. The Amended Motion to
`Terminate explains reasons termination is appropriate and states that no
`other inter partes reviews of U.S. Patent 10,213,113 B2 (“the ’113 patent”)
`are pending, and the parties do not contemplate any future litigation or
`proceeding involving the ’113 patent. Id. at 1–3. The parties previously
`filed a copy of a written settlement agreement (Ex. 1067) and we granted
`their joint request to keep the settlement agreement separate from the file of
`the involved patent under the provisions of 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c). Paper 11. In the Amended Motion to Terminate, 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).” Paper 12,
`1.
`
`In consideration of the above, we agree that it is appropriate to
`terminate this proceeding without rendering a final written decision. 37
`C.F.R. § 42.72.
`It is, therefore,
`ORDERED that the Amended Joint Motion to Terminate the
`proceeding is GRANTED and the proceeding is hereby terminated.
`
`
`
`2
`
`
`
`IPR2020-00209
`Patent 10,213,113 B2
`
`For PETITIONER:
`
`Jeffrey Kushan
`Ching-Lee Fukuda
`Thomas Broughan
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`clfukuda@sidley.com
`tbroughan@sidley.com
`
`
`For PATENT OWNER:
`
`Thomas Lewry
`John LeRoy
`Robert Tuttle
`John Halan
`Christopher Smith
`Andrew Turner
`BROOKS KUSHMAN P.C.
`tlewry@brookskushman.com
`jleroy@brookskushman.com
`rtuttle@brookskushman.com
`jhalan@brookskushman.com
`csmith@brookskushman.com
`aturner@brookskushman.com
`
`
`
`3
`
`
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