IPR2020-00459 (P.T.A.B. Feb. 18, 2021)

Neodron Ltd

Patent Trials and Appeals BoardFeb 18, 2021

IPR2020-00459 (P.T.A.B. Feb. 18, 2021)

Trials@uspto.gov Paper 26 571-272-7822 Entered: February 18, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ HP INC., MICROSOFT CORPORATION, DELL INC., DELL PRODUCTS LP, LENOVO (UNITED STATES) INC., and MOTOROLA MOBILITY LLC., Petitioner, v. NEODRON LTD., Patent Owner. ____________ IPR2020-00459 Patent 8,946,574 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 IPR2020-00459 Patent 8,946,574 B2 2 I. INTRODUCTION HP Inc., Microsoft Corporation, Dell Inc., Dell Products LP, Lenovo (United States) Inc., and Motorola Mobility LLC., (collectively, “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 24. The Parties also filed Settlement and License Agreements (Ex. 2011; Ex. 2012; Ex. 2013; Ex. 2014; Ex. 2015, collectively “Settlement Agreements”) and a Joint Request to Keep Separate (Paper 25, “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. 2011, 9– 10; Ex. 2012, 7; Ex. 2013, 7; Ex. 2014, 9–10; Ex. 2015, 7. The Parties also represent that their Settlement Agreements resolve all currently pending IPR2020-00459 Patent 8,946,574 B2 3 Patent Office and District Court proceedings between the Parties involving U.S. Patent No. 8,946,574 B2 (“the ’574 patent”). Joint Motion 1–3. We instituted a trial on the above-identified proceeding on September 14, 2020. Paper 17. 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 ’574 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 IPR2020-00459 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 ’574 IPR2020-00459 Patent 8,946,574 B2 4 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). IPR2020-00459 Patent 8,946,574 B2 5 For PETITIONER: James Heintz Robert Buergi DLA PIPER (US) LLP Jim.heintz@dlapiper.com Robert.buergi@dlapiper.com Robert High Philip Eklem Aliza Carrano FINNEGAN, HENDERSON, FARRABOW, GARRETT & DUNNER LLP Robert.high@finnegan.com Philip.eklem@finnegan.com Aliza.carrano@finnegan.com Christopher Douglas Caleb Bean ALSTON & BIRD LLP Christopher.douglas@alston.com Caleb.bean@alston.com For PATENT OWNER: Kent Shum Neil Rubin RUSS AUGUST & KABAT kshum@raklaw.com nrubin@raklaw.com