Neodron Ltd.

Patent Trials and Appeals Board

Feb 9, 2021

IPR2020-00779 (P.T.A.B. Feb. 9, 2021)

Trials@uspto.gov Paper 16
Tel: 571-272-7822 Date: February 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC. and MICROSOFT CORPORATION,
Petitioner,

v.

NEODRON LTD.,
Patent Owner.
____________

IPR2020-00779
Patent 7,903,092 B2
____________

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

BOUCHER, Administrative Patent Judge.

ORDER
Granting Joint Motion to Terminate
37 C.F.R. § 42.74

IPR2020-00779
Patent 7,903,092 B2

2
With our authorization, the parties filed a Joint Motion to Terminate
this proceeding. Paper 14. With the Joint Motion, the parties filed copies of
exhibits they describe as “true copies of the settlement agreements (Patent
License Agreements) that resolve the disputes in the above-captioned inter
partes review relating to the Patent-in-Suit.” Id. at 1; see Exs. 2006, 2007.
In their Joint Motion, the parties represent that “[t]here are no other
collateral agreements between the parties made in connection with, or in
contemplation of, the termination sought.” Paper 14, 1. The parties further
represent, in a Joint Request to Keep Separate, that “[t]he settlement
agreements resolve the disputes in the above-captioned inter partes review
relating to U.S. Patent No. 7,903,092.” Paper 15, 1. “The 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.” Id.
“An 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.” 35 U.S.C.
§ 317(a). The settlement agreements appear to be true copies, and, after
reviewing the agreements, we find that they contain confidential business
information regarding the terms of settlement. See Ex. 2006, 2007. The
parties have not yet filed any substantive papers after the proceeding was
instituted, Paper 10, and the proceeding is therefore at an early stage. We
accordingly determine that it is appropriate to terminate the proceeding and
to treat the filed settlement agreements as business confidential information
pursuant to 35 U.S.C. § 317(b).
IPR2020-00779
Patent 7,903,092 B2

3
It is
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that this proceeding is hereby terminated as to
all parties;
FURTHER ORDERED that the Joint Request to Keep Separate is
granted;
FURTHER ORDERED that the filed settlement agreements
(Exs. 2006, 2007) be treated as business confidential information pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and also remain designated as
“Parties and Board Only” in the Board’s E2E system.

IPR2020-00779
Patent 7,903,092 B2

4
For PETITIONER:
Adam Seitz
adam.seitz@eriseip.com

Paul Hart
paul.hart@weiseip.com

For PATENT OWNER:

Kent Shum
kshum@raklaw.com

Neil Rubin
nrubin@raklaw.com