Neodron Ltd.

Patent Trials and Appeals Board

Feb 18, 2021

IPR2020-01682 (P.T.A.B. Feb. 18, 2021)

Trials@uspto.gov Paper 13
571-272-7822 Entered: February 18, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC.,
SONY CORPORATION, and
SONY MOBILE COMMUNICATIONS INC.,
Petitioner,

v.

NEODRON LTD.,
Patent Owner.
____________

IPR2020-01682
IPR2020-01683
Patent 8,749,251 B21
____________

Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
SCOTT B. HOWARD, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION
Settlement Prior to Institution and
Granting Joint Requests to Treat Settlement Agreements as
Business Confidential Information
37 C.F.R. § 42.74

1 This Order applies to both proceedings. We exercise our discretion to
issue one Order to be filed in each case. The parties are not authorized to
use this style heading for any subsequent papers.
IPR2020-01682, IPR2020-01683
Patent 8,749,251 B2

2

I. INTRODUCTION
Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
Sony Corporation, and Sony Mobile Communications Inc. (“Petitioner”) and
Noedron Ltd. (“Patent Owner”), (collectively “the Parties”) request that the
above-identified inter partes review proceedings be terminated pursuant to a
settlement. With our authorization, the Parties filed a Joint Motion to
Terminate in each of the above-identified proceedings (“Joint Motion”).
Paper 10.2
The Parties also filed copies of Patent License Agreements,
Settlement Agreements, Escrow Agreements, and an Exhibit A to the
Escrow Agreements (Ex. 2001; Ex. 2002; Ex. 2003; Ex. 2004; Paper 12,3
collectively “Settlement Agreements”) and filed a Joint Request to Keep
Separate (Paper 11, “Joint Request”) in each of the above-identified
proceedings.
II. DISCUSSION
In the Joint Motions, the Parties represent that they have reached an
agreement to jointly seek termination of these inter partes review
proceedings, that the filed copies of the Settlement Agreements are true

2 For expediency, we cite to the Papers and Exhibits filed in IPR2020-01682,
unless otherwise indicated. Similar Papers and Exhibits were filed in
IPR2020-01683.
3 Exhibit A to the Escrow Agreement was filed as a paper instead of as an
exhibit. We determine this to be a harmless error. The parties are reminded
that evidences such as the Settlement Agreement must be filed as exhibits.
See 37 C.F.R. § 42.63(a) (“Evidence consists of affidavits, transcripts of
depositions, documents, and things. All evidence must be filed in the form
of an exhibit.”).
IPR2020-01682, IPR2020-01683
Patent 8,749,251 B2

3

copies, and there are no other collateral agreements between the parties
made in connection with, or in contemplation of, the termination of these
proceedings. Joint Motion 1–3. Further, the Settlement Agreements
indicate they are complete agreements. Ex. 2001, 12; Ex. 2002, 7; Ex. 2003,
12; Ex. 2004, 13. The Parties also represent that their disputes have been
resolved. Joint Motion 1–3.
We have not yet instituted a trial on the above-identified proceedings.
Nor have we decided the merits of the proceedings, and final written
decisions have not been entered in the proceedings. The Parties have shown
adequately that termination of the proceedings is appropriate. Under these
circumstances, we determine that good cause exists to terminate the
proceedings with respect to the Parties.
The Parties also requested that the Settlement Agreements be treated
as business confidential information and be kept separate from the file of
U.S. Patent No. 8,749,251 (“the ’251 patent”). Joint Request 1–2. After
reviewing the Settlement Agreements, we find that the Settlement
Agreements contain confidential business information regarding the terms of
settlement. We determine that good cause exists to treat the Settlement
Agreements between the Parties 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).
III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motions to Terminate are granted, and each
of IPR2020-01682 and IPR2020-01683 is terminated with respect to
IPR2020-01682, IPR2020-01683
Patent 8,749,251 B2

4

Petitioner and Patent Owner; and
FURTHER ORDERED that the Joint Requests are granted, and the
Settlement Agreements shall be kept separate from the file of the ’251 patent
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).

IPR2020-01682, IPR2020-01683
Patent 8,749,251 B2

5

For PETITIONER:
John Kappos
Nicholas Whilt
Nancy Schroeder
O’MELVENY & MYERS LLP
jkappos@omm.com
nwhilt@omm.com
nschroeder@omm.com
Randy Pritzker
Marc Johannes
WOLF GREENFIELD & SACKS P.C.
rpritzker-ptab@wolfgreenfield.com
mjohannes-ptab@wolfgreenfield.com

For PATENT OWNER:
Kent Shum
Reza Mirzaie
Neil Rubin
Philip Wang
C. Jay Chung
RUSS AUGUST & KABAT
kshum@raklaw.com
rmirzaie@raklaw.com
nrubin@raklaw.com
pwang@raklaw.com
jchung@raklaw.com