Neodron Ltd

Patent Trials and Appeals Board

Feb 5, 2021

IPR2020-00682 (P.T.A.B. Feb. 5, 2021)

Trials@uspto.gov Paper 39
Tel: 571-272-7822 Date: February 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC.,
LENOVO (UNITED STATES) INC., MOTOROLA MOBILITY LLC, and
DELL TECHNOLOGIES INC.1,
Petitioner,

v.

NEODRON LTD.,
Patent Owner.
____________

IPR2020-00192
Patent 8,502,547 B2
____________

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

BOUCHER, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

1 The petitioners to IPR2020-00682 have been joined as parties to this
proceeding.
IPR2020-00192
Patent 8,502,547 B2

2
With our authorization, the parties filed a Renewed Joint Motion to
Terminate this proceeding. Paper 36. With the Renewed Joint Motion, the
parties filed copies of exhibits they describe as “true copies of the settlement
agreements (Patent License Agreements and Escrow Agreement) that
resolve the disputes in the above-captioned inter partes review relating to
the Patent-in-Suit.” Id. at 1; see Exs. 2010−2015, Paper 38. In their
Renewed Joint Motion, the parties represent that “[t]here are no other
collateral agreements between the parties made in connection with, or in
contemplation of, the termination sought.” Paper 36, 1. The parties further
represent, in a Renewed Joint Request to Keep Separate, that “[t]he
settlement agreements resolve the disputes in the above-captioned inter
partes review relating to U.S. Patent No. 8,502,547.” Paper 37, 1. “The
parties jointly request that the Board treat the settlement agreements as
business confidential information and keep them separate from the files of
this proceeding and the files of the Patent-in-Suit.” Id.
“An 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.” 35 U.S.C.
§ 317(a). The refiled settlement agreements appear to be true copies, and,
after reviewing the agreements, we find that they contain confidential
business information regarding the terms of settlement. See Ex. 2010−2015,
Paper 38. Because the proceeding has not yet advanced to the stage where
an oral hearing has been held, we determine that it is appropriate to
terminate the proceeding and to treat the filed settlement agreements as
business confidential information pursuant to 35 U.S.C. § 317(b).
IPR2020-00192
Patent 8,502,547 B2

3
We accordingly grant the Renewed Joint Motion and Renewed Joint
Request to Keep Separate.

It is
ORDERED that the Renewed Joint Motion to Terminate is granted;
FURTHER ORDERED that this proceeding is hereby terminated as to
all parties;
FURTHER ORDERED that IPR2020-00682 is hereby terminated as
to all parties;
FURTHER ORDERED that the Renewed Joint Request to Keep
Separate is granted;
FURTHER ORDERED that the filed settlement agreements
(Exs. 2003−2015, Paper 38) be treated as business confidential information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and also remain
designated as “Parties and Board Only” in the Board’s E2E system.

IPR2020-00192
Patent 8,502,547 B2

4
For PETITIONER:
Marc Pensabene
Nicholas J. Whilt
Laura Bayne
O’Melveny & Myers LLP
mpensabene@omm.com
nwhilt@omm.com
lbayne@omm.com

For PATENT OWNER:
Kent Shum
Neil Rubin
Reza Mirzaie
Philip X. Wang
Russ August & Kabat
kshum@raklaw.com
nrubin@raklaw.com
rmirzaie@raklaw.com
pwang@raklaw.com