Neodron Ltd.

Patent Trials and Appeals Board

Feb 19, 2021

IPR2020-00778 (P.T.A.B. Feb. 19, 2021)

Trials@uspto.gov Paper 17
571-272-7822 Entered: February 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC., MICROSOFT CORPORATION,
SAMSUNG ELECTRONICS CO., LTD, and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

NEODRON LTD.,
Patent Owner.
____________

IPR2020-007781
Patent 7,821,425 B2
____________

Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial and
Granting Joint Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. § 42.74

1 IPR2020-01119 has been joined with IPR2020-00778.
IPR2020-00778
Patent 7,821,425 B2

2

I. INTRODUCTION
Petitioner and Patent Owner (collectively “the Parties”) have
requested that the above-identified joined inter partes review proceeding be
terminated pursuant to a settlement. On February 8, 2021, the Parties filed a
Joint Motion to Terminate in the joined proceeding (“Joint Motion”). Paper
15. On February 1, 2021, we authorized the Parties, via email, to file a joint
motion to terminate the joined proceeding. Joint Motion 1. The Parties also
filed copies of Settlement Agreements, Patent License Agreements, an
Escrow Agreement, and an Exhibit A to the Escrow Agreement (Ex. 2004;
Ex. 2005; Ex. 2006; Ex. 2007; Ex. 2008; IPR2020-01119 Paper 9,2
collectively “Settlement Agreements”) and filed a Joint Request to Keep
Separate (Paper 16, “Joint Request”) in the joined proceeding.
II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n 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.” It is
also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
partes review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the joined inter partes review
proceeding, that the filed copies of the Settlement Agreements are true
copies, and there are no other collateral agreements between the parties
made in connection with, or in contemplation of, the termination. Joint

2 Exhibit A to the Escrow Agreement was filed as a paper in IPR2020-01119
instead of as an exhibit in IPR2020-00778.
IPR2020-00778
Patent 7,821,425 B2

3

Motion 1–3. Further, the Settlement Agreements indicate they are complete
agreements. Ex. 2004, 7; Ex. 2005, 7; Ex. 2006, 12; Ex. 2007, 12; Ex. 2008,
13. The Parties also represent that their Settlement Agreements resolve all
currently pending Patent Office and District Court proceedings between the
Parties involving Patent 7,821,425. Joint Motion 1–3.
We instituted a trial on the joined proceeding on November 23, 2020.
Paper 12. We have not yet decided the merits of the joined proceeding, and
a final written decision has not been entered. Notwithstanding that the
joined proceeding has moved beyond the preliminary stage, the Parties have
shown adequately that the termination of the joined proceeding is
appropriate. Under these circumstances, we determine that good cause
exists to terminate the joined proceeding 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
Patent 7,821,425. Joint Request 1–2. After reviewing the Settlement
Agreements between the Parties, 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 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 Motion is granted, and that IPR2020-00778
is hereby terminated and IPR2020-01119 (the joined proceeding) is closed;
IPR2020-00778
Patent 7,821,425 B2

4

and
FURTHER ORDERED that the Joint Request is granted, and the
Settlement Agreements shall be kept separate from the file of Patent
7,821,425, 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).

IPR2020-00778
Patent 7,821,425 B2

5

For PETITIONER:
Adam Seitz
Paul Hart
ERISE IP, P.A.
adam.seitz@eriseip.com
paul.hart@eriseip.com
For PATENT OWNER:
Kent Shum
Neil Rubin
RUSS AUGUST & KABAT
kshum@raklaw.com
nrubin@raklaw.com