Neodron, Ltd.

Patent Trials and Appeals Board

Oct 13, 2021

IPR2021-01115 (P.T.A.B. Oct. 13, 2021)

Trials@uspto.gov Paper 8
571.272.7822 Entered: October 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PANASONIC CORPORATION,
Petitioner,
v.
NEODRON LTD.,
Patent Owner.
____________

IPR2021-01115
Patent 8,946,574 B2
____________

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

HOWARD, Administrative Patent Judge.

TERMINATION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2021-01115
Patent 8,946,574 B2

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I. INTRODUCTION
With the Board’s prior authorization, Panasonic Corporation and
Neodron Ltd. (collectively “the Parties”) filed a Joint Motion By Petitioner
and Patent Owner to Terminate the above-captioned preliminary proceeding.
Paper 6 (“Joint Motion”). In support of the Joint Motion, the Parties filed a
copy of a written, confidential “SETTLEMENT AND LICENSE
AGREEMENT.” Ex. 1020 (“Settlement Agreement”). The Parties also
filed a Joint Request to File Settlement Agreement as Confidential Business
Information. Paper 7 (“Joint Request”).
II. DISCUSSION
In the Joint Motion, the Parties state that they “have entered into a
confidential Settlement and License Agreement . . . , which . . . requires both
parties to terminate all disputes, including (i) Inter Partes Review
Proceeding No. IPR2021-01115, and (ii) Neodron Ltd. v. Panasonic
Corporation, et al., in the Eastern District of Texas, Civil Action No. 2:20-
cv-00241-JRP-RSP.” Joint Motion 2. The parties further state that “the
confidential Agreement between the parties has been made in writing, . . . a
true and correct copy is being filed with the Patent Office with this Motion,”
and “[t]here are no other collateral agreements between the parties made in
connection with, or in contemplation of, the termination sought.” Id. at 2–3.
There are strong public policy reasons to favor settlement between the
parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg.
64,280 (Nov. 21, 2019). Here, the Parties assert that
termination of this inter partes review is appropriate because (i)
the proceeding is at a sufficiently early stage; (ii) the parties
have settled their disputes; (iii) the parties have agreed to
dismiss, and already have dismissed the related litigation; and
IPR2021-01115
Patent 8,946,574 B2

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(iv) the parties to this inter partes review agree that it should be
terminated.
Joint Motion 3. For at least these reasons, we determine that good cause
exists and that it is appropriate to dismiss the petition and terminate the
preliminary proceeding as to the Parties, without rendering a decision on
institution or a final written decision. See 37 C.F.R. § 42.74.
In the Joint Request, the Parties jointly request that the Settlement
Agreement “is treated as confidential business information, kept separate
from the files of the involved patent, and made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause.” Joint Request 2.
After reviewing the Settlement Agreement between the Parties, we
find that the Settlement Agreement contains confidential business
information regarding the terms of settlement. Thus, we determine that good
cause exists to treat the Settlement Agreement (Ex. 1020) between the
Parties as business confidential information under 37 C.F.R. § 42.74(c), to
keep it separate from the files of the involved patent and associated
preliminary proceeding, and to limit its availability as requested by the
Parties.
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
Accordingly, it is:
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that the preliminary proceeding in
IPR2021-01115 is terminated and its petition is dismissed; and
IPR2021-01115
Patent 8,946,574 B2

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FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Confidential Business Information is granted, and the
Settlement Agreement shall remain designated as “Parties and Board Only”
in Board’s filing system, shall made available only to Federal Government
agencies on written request, or to any person on a showing of good cause,
and shall be kept separate from the files of the involved patents and
associated preliminary proceedings, pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c).

IPR2021-01115
Patent 8,946,574 B2

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For PETITIONER:

Christopher Douglas
Christopher.douglas@alston.com

H. James Abe
James.abe@alston.com

Caleb Bean
Caleb.bean@alston.com

For PATENT OWNER:

Reza Mirzaie
rmirzaie@raklaw.com

Kristopher Davis
kdavis@raklaw.com

C. Jay Chung
jchung@raklaw.com