Neodron Ltd.

Patent Trials and Appeals Board

May 13, 2020

IPR2020-00521 (P.T.A.B. May. 13, 2020)

Trials@uspto.gov Paper 8
571-272-7822 Entered: May 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
AMERICA, INC., and HP INC.,
Petitioner,
v.
NEODRON LTD.,
Patent Owner.

____________

Case IPR2020-00521
Patent 10,365,747 B2
____________

Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

ORDER
Granting Motion to Withdraw Petition and Terminate Proceeding
37 C.F.R. § 42.5(a)

IPR2020-00521
Patent 10,365,747 B2

2
I. INTRODUCTION
Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
HP Inc., “Petitioner,” filed a Petition requesting inter partes review of
claims 121 of U.S. Patent No. 10,365,747 B2 ( “the ’747 patent”). Paper 1
(“Pet.”). Neodron Ltd. (“Patent Owner”) has not filed a Preliminary
Response in this proceeding. This Petition, however, is the second petition
concerning the ’747 patent. Petitioner previously filed a first petition also
challenging claims 121 of the ’747 patent and that proceeding is pending as
IPR2020-00308 (“the ’308 IPR”). Petitioner requested, and we authorized,
the filing of an unopposed Motion to Withdraw Petition for Inter Partes
Review. See Paper 7 (“Mot.”).
The Motion explains that the Petition in this proceeding was filed to
account for a potential dispute in priority date. Mot. 12; see also Pet. 56
(stating that “[t]o streamline the Board’s review, Petitioner[] would be
willing to withdraw this Petition if Patent Owner agrees not to assert an
earlier invention date and stipulates that, for purposes of this inter partes
review proceeding, Stacy qualifies as prior art to Claims 121 of the
’747 patent.”). Patent Owner has confirmed in its preliminary response that
“[f]or purposes of this IPR, Patent Owner agrees that December 2, 2010 is
the priority date of the ’747 patent,” and that it will not seek to swear behind
the reference asserted in IPR2020-00308. ’308 IPR, Prelim. Resp. 15 (Paper
7). Patent Owner does not oppose Petitioner’s motion to withdraw the
instant Petition and terminate the proceeding in order to preserve the
resources of the Board and the parties. Mot. 1.
IPR2020-00521
Patent 10,365,747 B2

3
CONCLUSION
This proceeding is at the early stages before institution and the parties
have shown that no dispute as to the priority date persists such that a second
petition challenging claims 121 of the ’747 patent would be necessary.
We, therefore, grant the Motion and terminate IPR2020-00521.
II. ORDER
Accordingly, it is hereby:
ORDERED that Petitioner’s Motion to Withdraw Petition is granted;
and
FURTHER ORDERED that IPR2020-00521 is hereby terminated.

IPR2020-00521
Patent 10,365,747 B2

4
For PETITIONER:
Marc Pensabene
Nicholas J. Whilt
O’MELVENY & MYERS LLP
Mpensabene@omm.com
nwhilt@omm.com

For PATENT OWNER:

Kent Shum
Neil A. Ruben
RUSS AUGUST & KABAT
Kshum@raklaw.com
Nrubin@raklaw.com