Neodron, Ltd.

Patent Trials and Appeals Board

Feb 18, 2021

IPR2020-01229 (P.T.A.B. Feb. 18, 2021)

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