IPR2020-00225 (P.T.A.B. Feb. 5, 2021)

Neodron Ltd

Patent Trials and Appeals BoardFeb 5, 2021

IPR2020-00225 (P.T.A.B. Feb. 5, 2021)

Trials@uspto.gov Paper 36 Tel: 571-272-7822 Date: February 5, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. NEODRON LTD., Patent Owner. ____________ IPR2020-00225 Patent 8,610,009 B2 ____________ Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-00225 Patent 8,610,009 B2 2 With our authorization, the parties filed a Renewed Joint Motion to Terminate this proceeding. Paper 33. With the Renewed 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. 2007−2009, Paper 35. In their Renewed 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.” Id. The parties further represent, in a Renewed 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. 8,610,009.” Paper 34, 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 refiled settlement agreements appear to be true copies, and, after reviewing the agreements, we find that they contain confidential business information regarding the terms of the settlement. Exs. 2007−2009, Paper 35. Because this proceeding has not yet advanced to a stage where an oral hearing has been held, we determine that it is appropriate to terminate the proceeding and to treat the settlement agreement as business confidential information pursuant to 35 U.S.C. § 317(b). IPR2020-00225 Patent 8,610,009 B2 3 We accordingly grant the Renewed Joint Motion and Renewed Joint Request to Keep Separate. It is ORDERED that the Renewed Joint Motion to Terminate is granted; FURTHER ORDERED that this proceeding is hereby terminated as to all parties; FURTHER ORDERED that the Renewed Joint Request to Keep Separate is granted; FURTHER ORDERED that the filed settlement agreement (Exs. 2004−2009, Paper 35) 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. IPR2020-00225 Patent 8,610,009 B2 4 For PETITIONER: Marc Pensabene Nicholas J. Whilt Laura Bayne Gore O’Melveny & Myers LLP mpensabene@omm.com nwhilt@omm.com lbayne@omm.com For PATENT OWNER: Kent Shum Neil A. Ruben Reza Mirzaie Philip Wang Russ August & Kabat kshum@raklaw.com nrubin@raklaw.com rmirzaie@raklaw.com pwang@raklaw.com