Neodron Ltd

Patent Trials and Appeals Board

Feb 18, 2021

IPR2020-00469 (P.T.A.B. Feb. 18, 2021)

Trials@uspto.gov Paper 20
571-272-7822 Entered: February 18, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION, HP INC., DELL INC.,
DELL PRODUCTS LP, and LENOVO (UNITED STATES) INC.
Petitioner,

v.

NEODRON LTD.,
Patent Owner.
____________

IPR2020-00469
Patent 10,088,960 B2
____________

Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
SCOTT B. HOWARD, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial and
Granting Joint Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-00469
Patent 10,088,960 B2

2

I. INTRODUCTION
Microsoft Corporation, HP Inc., Dell Inc., Dell Products LP, and
Lenovo (United States) Inc. (collectively, “Petitioner”) and Neodron Ltd.
(“Patent Owner”), (collectively “the Parties”) requested that the above-
identified inter partes review proceeding be terminated pursuant to a
settlement. With our authorization, the Parties filed a Joint Motion to
Terminate the above-identified proceeding (“Joint Motion”). Paper 18
The Parties also filed Settlement and License Agreements (Ex. 2001;
Ex. 2002; Ex. 2003; Ex. 2004, collectively “Settlement Agreements”) and a
Joint Request to Keep Separate (Paper 19, “Joint Request”).
II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n 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.” It is
also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
partes review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of this inter partes review proceeding,
that the filed copies of the Settlement Agreements are true copies, and there
are no other collateral agreements. Joint Motion 1–3. Further, the
Settlement Agreements indicate they are complete agreements. Ex. 2001, 7;
Ex. 2002, 9–10; Ex. 2003, 7; Ex. 2004, 9–10. The Parties also represent that
their Settlement Agreements resolve all currently pending Patent Office and
District Court proceedings between the Parties involving U.S. Patent No.
10,088,960 B2 (“the ’960 patent”). Joint Motion 1–3.
IPR2020-00469
Patent 10,088,960 B2

3

We instituted a trial on the above-identified proceeding on August 20,
2020. Paper 9. We have not yet decided the merits of the proceeding, and a
final written decision has not been entered. Notwithstanding that the
proceeding has moved beyond the preliminary stage, the Parties have
adequately shown that the termination of the proceeding is appropriate.
Under these circumstances, we determine that good cause exists to terminate
the proceeding with respect to the Parties.
The Parties also requested that the Settlement Agreements be treated
as business confidential information and be kept separate from the file of the
’960 patent. Joint Request 1–2. After reviewing the Settlement Agreements
between the Parties, we find that the Settlement Agreements contain
confidential business information regarding the terms of settlement. We
determine that good cause exists to treat the Settlement Agreements as
business confidential information pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion is granted, and IPR2020-00469 is
terminated with respect to Petitioner and Patent Owner, pursuant to
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Request is granted, and the
Settlement Agreements shall be kept separate from the file of the ’960
patent, and made available only to Federal Government agencies on written
IPR2020-00469
Patent 10,088,960 B2

4

request, or to any person on a showing of good cause, pursuant to 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c).

IPR2020-00469
Patent 10,088,960 B2

5

For PETITIONER:
James M. Heintz
Robert Buergi
DLA Piper LLP (US)
jim.heintz@dlapiper.com
robert.buergi@dlapiper.com

Aliza George Carrano
Philip J. Eklem
Robert K. High
Finnegan, Henderson, Farabow, Garrett and Dunner, LLP
aliza.carrano@finnegan.com
philip.eklem@finnegan.com
robert.high@finnegan.com

Christopher TL Douglas
Caleb J. Bean
Alston & Bird LLP
christopher.douglas@alston.com
caleb.bean@alston.com

For PATENT OWNER:

Kent Shum
Neil A. Rubin
Russ August & Kabat
kshum@raklaw.com
nrubin@raklaw.com