IPR2020-00234 (P.T.A.B. Feb. 5, 2021)

Neodron Ltd

Patent Trials and Appeals BoardFeb 5, 2021

IPR2020-00234 (P.T.A.B. Feb. 5, 2021)

Trials@uspto.gov Paper 35 Tel: 571-272-7822 Entered: 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. IPR2020-00234 Patent 8,847,898 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 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-00234 Patent 8,847,898 B2 2 With our authorization, the parties filed a Renewed Joint Motion to Terminate this proceeding. Paper 32. With the Renewed Joint Motion, the parties filed copies of exhibits they describe as “true copies of the settlement agreements that resolve the disputes in the above-captioned inter partes review related to the Patent-in-Suit.” Id. at 1; see Exs. 2009−2011, Paper 34. 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.” Paper 32, 1. 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. 8,847,898.” Paper 33, 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 between Samsung, RPX, and Neodron. appear to be a true copy, and, after reviewing the agreement, we find that they contain confidential business information regarding the terms of settlement. See Ex. 2009−2011, Paper 34. 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 IPR2020-00234 Patent 8,847,898 B2 3 settlement agreements as business confidential information pursuant to 35 U.S.C. § 317(b). It is ORDERED that the Renewed Joint Motion to Terminate is granted; FURTHER ORDERED that this proceeding is hereby terminated as to all remaining entities; FURTHER ORDERED that the Renewed Joint Request to Keep Separate is granted; FURTHER ORDERED that the filed settlement agreements (Exs. 2005, 2007−2011, Paper 34) 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. IPR2020-00234 Patent 8,847,898 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 James M. Heintz Robert Buergi DLA PIPER LLP jim.heintz@dlapiper.com robert.buergi@dlapiper.com For PATENT OWNER: Kent Shum Neil A. Rubin Reza Mirzaie Philip Wang RUSS AUGUST & KABAT kshum@raklaw.com nrubin@raklaw.com rmirzaie@raklaw.com pwang@raklaw.com