IPR2020-00406 (P.T.A.B. Feb. 9, 2021)

Neodron Ltd

Patent Trials and Appeals BoardFeb 9, 2021

IPR2020-00406 (P.T.A.B. Feb. 9, 2021)

Trials@uspto.gov Paper 28 Tel: 571-272-7822 Date: February 9, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., DELL INC., DELL PRODUCTS LP, LENOVO (UNITED STATES) INC., MOTOROLA MOBILITY LLC, and HP INC.,1 Petitioner, v. NEODRON LTD., Patent Owner. ____________ IPR2020-00406 Patent 8,791,910 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 1 The petitioners to IPR2020-00716 have been joined as parties to this proceeding. IPR2020-00406 Patent 8,791,910 B2 2 With our authorization, the parties filed a Joint Motion to Terminate this proceeding. Paper 25. With the Joint Motion, the parties filed copies of exhibits they describe as “true copies of the settlement agreements (Patent License Agreements and Escrow Agreement) that resolve the disputes in the above-captioned inter partes review relating to the Patent-in-Suit.” Id. at 1; see Exs. 2012−2018, Paper 27. 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 25, 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. 8,791,910.” Paper 37, 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. 2012−2018, Paper 27. Because the proceeding has not yet advanced to the stage where an oral hearing has been held, we 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). IPR2020-00406 Patent 8,791,910 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 IPR2020-00716 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. 2012−2018, Paper 27) 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. IPR2020-00406 Patent 8,791,910 B2 4 For PETITIONER: Christopher Douglas Lauren Bolcar ALSTON & BIRD LLP Christopher.douglas@alston.com Lauren.bolcar@alston.com James Heintz Robert Buergi DLA PIPER LLP Jim.heintz@dlapiper.com Robert.buergi@dlapiper.com Aliza Carrano Robert High FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP Aliza.carrano@finnegan.com Robert.high@finnegan.com Marc J. Pensabene Nicholas J. Whilt Nancy Schroeder O’MELVENY & MYERS LLP mpensabene@omm.com nwhilt@omm.com nschroeder@omm.com For PATENT OWNER: Kent Shum Neil A. Rubin RUSS AUGUST & KABAT kshum@raklaw.com nrubin@raklaw.com