Neodron, Ltd.Download PDFPatent Trials and Appeals BoardFeb 18, 2021IPR2020-01229 (P.T.A.B. Feb. 18, 2021) Copy Citation Trials@uspto.gov Paper 11 571-272-7822 Entered: February 18, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE INC., Petitioner, v. NEODRON LTD., Patent Owner. ____________ IPR2020-01229 Patent 9,823,784 B2 ____________ Before PATRICK M. BOUCHER, CHRISTOPHER L. OGDEN, 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 IPR2020-01229 Patent 9,823,784 B2 2 I. INTRODUCTION Apple Inc. (“Petitioner”) and Neodron, Ltd. (“Patent Owner”), (collectively “the Parties”) request 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 9. The Parties also filed a Settlement Agreement (Ex. 2001, “Settlement Agreement”) and filed a Joint Request to Keep Separate (Paper 10, “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 copy of the Settlement Agreement is a true copy, and there are no other collateral agreements. Joint Motion 1–3. Further, the Settlement Agreement indicates it is a complete agreement. Ex. 2001, 7. The Parties also represent that their Settlement Agreement resolves all currently pending Patent Office and District Court proceedings between the Parties involving U.S. Patent No. 9,823,784 (“the ’784 patent”). Joint Motion 1–3. We instituted a trial on the above-identified proceeding on January 21, 2021. Paper 6. We have not yet decided the merits of the proceeding, and a IPR2020-01229 Patent 9,823,784 B2 3 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 Agreement be treated as business confidential information and be kept separate from the file of Patent 9,823,784. Joint Request 1–2. After reviewing the Settlement Agreement between the Parties, we find that the Settlement Agreement contains confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreement 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 IPR2020-01229 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 Agreement shall be kept separate from the file of the ’784 patent, and made available only to Federal Government agencies on written 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). IPR2020-01229 Patent 9,823,784 B2 4 For PETITIONER: Adam P. Seitz Paul R. Hart ERISE IP, P.A. Adam.Seitz@eriseip.com Paul.Hart@eriseip.com For PATENT OWNER: Kent Shum Neil. A. Rubin Reza Mirzaie C. Jay Chung Philip X. Wang RUSS AUGUST & KABAT kshum @taklaw.com nrubin@raklaw.com rmitzaie@raklaw.com jchung@raklaw.com pwang@raklaw.com Copy with citationCopy as parenthetical citation