Neodron Ltd

Patent Trials and Appeals Board

Feb 8, 2021

IPR2020-01287 (P.T.A.B. Feb. 8, 2021)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Date: February 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
NEODRON LTD.,
Patent Owner.

IPR2020-01287
Patent 9,411,472 B2

Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
QUINN, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2020-0
Patent 9,411,472 B2

2

With our authorization, the parties filed a Joint Motion to Terminate
this proceeding (Paper 6) and a Joint Request to Keep Separate (Paper 7).
With these filings the parties also filed what they describe as “a true copy of
the settlement agreement (Patent License Agreement) that resolves the
disputes in the above-captioned inter partes review relating to the Patent-in-
Suit.” Paper 6, 1; see Ex. 2001; see also Paper 7, 1 (representing that “[t]he
settlement agreement[] resolve[s] the disputes in the above-captioned inter
partes review relating to U.S. Patent No. 9,411,472.”). The parties also
represent that “[t]here are no other collateral agreements between the parties
made in connection with, or in contemplation of, the termination sought.”
Paper 6, 1.
In the Joint Motion to Terminate, the parties ask the Board to
“terminate the inter partes review of the Patent-in-Suit, Case IPR2020-
01287, in its entirety.” Paper 6, 1. Under 37 C.F.R. § 42.71(a), the Board
may “dismiss any petition,” thus terminating a preliminary proceeding. In
addition, when the parties seek to terminate a proceeding by submitting a
settlement agreement, “[a]ny agreement or understanding between the
parties made in connection with, or in contemplation of, the termination of a
proceeding shall be in writing and a true copy shall be filed with the Board.”
37 C.F.R. § 42.74(b).
This case is still in the preliminary proceeding stage, and the Board
has not yet decided whether to institute trial. Under these circumstances, we
determine that it is appropriate to dismiss the Petition and terminate this case
without rendering a decision on institution. We also determine that the filed
Exhibit 2001 appears to be a true copy of the agreement between the parties
IPR2020-0
Patent 9,411,472 B2

3

in connection with settlement of this proceeding. Therefore, we grant the
Joint Motion to Terminate.
In the Joint Request to Keep Separate, “[t]he parties jointly request
that the Board treat the settlement agreements as business confidential
information and keep them separate from the files of this proceeding and the
files of the Patent-in-Suit.” Paper 7, 1. We find that the submitted
settlement agreements contain confidential business information regarding
the terms of the settlement. Ex. 2001. Accordingly, we agree that the
settlement agreement should be treated as business confidential information
and kept separate from the files of the involved patent, and we grant the
Joint Request to Keep Separate.

It is
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that the Petition is dismissed;
FURTHER ORDERED that this proceeding is terminated as to all
parties;
FURTHER ORDERED that the Joint Request to Keep Separate is
granted; and
FURTHER ORDERED that the filed settlement agreement (Ex. 2001)
be treated as business confidential information pursuant to 37 C.F.R.
§ 42.74(c) and also remain designated as “Parties and Board Only” in the
Board’s E2E system.

IPR2020-0
Patent 9,411,472 B2

4

For PETITIONER:
Adam P. Seitz (Lead Counsel)
Paul R. Hart
Callie A. Pendergrass
ERISE IP, P.A.
adam.seitz@eriseip.com
paul.hart@eriseip.com
callie.pendergrass@eriseip.com

For PATENT OWNER:
Kent Shum (Lead Counsel)
Neil A. Rubin
Reza Mirzaie
Philip X. Wang
RUSS AUGUST & KABAT
kshum@raklaw.com
nrubin@raklaw.com
rmirzaie@raklaw.com
pwang@raklaw.com