Trials@uspto.gov
`571-272-7822
`
`Paper 50
`Date: August 2, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)1
`
`
`Before PATRICK R. SCANLON, DAVID C. MCKONE,
`GREGG I. ANDERSON, and NORMAN H. BEAMER,
`Administrative Patent Judges.2
`ANDERSON, 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 all identified proceedings.
`We exercise our discretion to issue one Order to be filed in each proceeding.
`The parties, however, are not authorized to use this style heading in
`subsequent papers.
`2 This is not an expanded panel. Rather, the four listed judges represented
`overlapping three-judge panels on the above-captioned proceedings.
`
`
`
`
`571-272-7822
`
`Paper 50
`Date: August 2, 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)1
`
`
`Before PATRICK R. SCANLON, DAVID C. MCKONE,
`GREGG I. ANDERSON, and NORMAN H. BEAMER,
`Administrative Patent Judges.2
`ANDERSON, 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 all identified proceedings.
`We exercise our discretion to issue one Order to be filed in each proceeding.
`The parties, however, are not authorized to use this style heading in
`subsequent papers.
`2 This is not an expanded panel. Rather, the four listed judges represented
`overlapping three-judge panels on the above-captioned proceedings.
`
`
`
`
`
`IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)
`INTRODUCTION
`I.
`Petitioner and Patent Owner (“Parties”) have requested that the above-
`identified inter partes review proceedings (“’592 IPR” and “’600 IPR,”
`respectively) be terminated. ’592 IPR, Paper 54; ’600 IPR, Paper 47.3 On
`July 27, 2022, we authorized via email the Parties to file joint motions to
`terminate the above-identified proceedings. On July 28, 2022, the Parties
`filed a Joint Motion to Terminate in each of the above-identified proceedings
`(“Motions”).4 Id. Along with the Motions, the Parties filed a copy of a
`Settlement and License Agreement in each of the above-identified
`proceedings (“Settlement Agreement”). ’592 IPR, Exs. 2053, 2054 (Ex. A
`to Settlement Agreement); ’600 IPR, Exs. 2030, 2031 (Ex. A to Settlement
`Agreement) The Parties also filed a Joint Request that the Settlement
`Agreement be treated as business confidential information and kept separate
`from the file of the involved patent and be pursuant to 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c) in each of the above-identified proceedings (“Joint
`Requests”). ’592 IPR, Paper 55; ’600 IPR, Paper 48.
`II. DISCUSSION
`In the Motions, the Parties represent that they have reached an
`agreement to jointly seek termination of the above-identified inter partes
`review proceedings, the Settlement Agreement constitutes the entire
`
`
`3 Citations are to Papers and Exhibits filed in IPR2021-00592, unless
`otherwise indicated. Parties filed a similar paper in IPR2021-00600.
`Paper 47.
`4 The Motions request termination “[p]ursuant to 35 U.S.C. § 327(a).”
`Paper 54, 1. 35 U.S.C. § 327(a) applies to settlement for post-grant review.
`35 U.S.C. § 317(a) applies to settlement for inter partes review, the type of
`proceeding at issue here. We deem this harmless error and understand the
`parties to request termination pursuant to 35 U.S.C. § 317(a).
`
`2
`
`
`
`IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)
`understanding and agreement between the Parties, and true copies of the
`Settlement Agreement have been filed. ’592 IPR, Paper 54, 1; ’600 IPR,
`Paper 47. The Parties further represent that the Settlement Agreement
`resolves all currently pending Patent Office and District Court proceedings
`between the Parties involving Patent 10,469,934 B2 in the ’592 IPR and
`Patent 10,298,451 B1 in the ’600 IPR. ’592 IPR, Paper 54, 1; ’600 IPR,
`Paper 47.
`We instituted a trial in the ’592 IPR on August 23, 2021 (Paper 9) and
`instituted a trial in the ’600 IPR on September 1, 2021 (Paper 9). We have
`not yet decided the merits on all claims and grounds for either of these
`proceedings, and a final written decision addressing all claims and grounds
`has not been entered in these proceedings. Notwithstanding that these
`proceedings have moved beyond the preliminary stage, the Parties have
`shown adequately that the termination of these proceedings is appropriate.
`Under these circumstances, we determine that good cause exists to terminate
`these proceedings with respect to the Parties.
`The Parties also filed Joint Requests that the Settlement Agreement be
`treated as business confidential information and be kept separate from the
`files of the patents involved in these inter partes proceedings. ’592 IPR,
`Papers 55, 56; 600 IPR, Papers 48, 49. After reviewing the Settlement
`Agreement between Petitioner and Patent Owner, we find that the Settlement
`Agreement contains confidential business information regarding the terms of
`settlement. We determine that good cause exists to treat the Settlement
`Agreement 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).
`
`3
`
`
`
`IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motions to Terminate the above-identified
`proceedings are granted and the above-identified proceedings are terminated
`with respect to Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a)
`and 37 C.F.R. § 42.72;
`FURTHER ORDERED that the Joint Requests that the Settlement
`Agreement, including Exhibit A attached thereto, be treated as business
`confidential information and kept separate are granted, and the Settlement
`Agreement shall be kept separate from the files of Patent 10,298,451 B1 and
`Patent 10,469,934 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).
`
`4
`
`
`
`IPR2021-00592 (Patent 10,469,934 B2)
`IPR2021-00600 (Patent 10,298,451 B1)
`FOR PETITIONER:
`
`Walter Renner
`David Holt
`Ryan Chowdhury
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`Devoto@fr.com
`rchowdhury@fr.com
`
`
`FOR PATENT OWNER:
`
`Mark Knedeisen
`Lauren Murray
`Brian Bozzo
`K & L GATES LLP
`Mark.knedeisen@klgates.com
`Lauren.murray@klgates.com
`Brian.bozzo@klgates.com
`
`
`5
`
`
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