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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
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`v.
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`NEODRON LTD.,
`Patent Owner.
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`IPR2020-00267 (Patent 8,432,173)
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`HP INC., LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC., DELL INC., AND
`DELL PRODUCTS LP.,
`Petitioners,
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`v.
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`NEODRON LTD.,
`Patent Owner.
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`IPR2020-00653 (Patent 8,432,173)
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`IPR2020-00267 (Patent 8,432,173)
`IPR2020-00653 (Patent 8,432,173)
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`Patent Owner Neodron Ltd. and Petitioners Samsung Electronics Co., Ltd,
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`Samsung Electronics America, Inc. (collectively “Samsung”), HP Inc., Lenovo
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`(United States) Inc., Motorola Mobility LLC., Dell Inc., and Dell Products LP.
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`(collectively “Dell”), have reached a settlement. Pursuant to 35 U.S.C. § 317(a) and
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`37 C.F.R. §§ 42.72 and 42.74, the parties jointly request termination of the joined
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`inter partes review of U.S. Patent No. 8,432,173 (“Patent-in-Suit”), Cases IPR2020-
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`00267 and IPR2020-00653. The parties were authorized to file this Joint Motion by
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`the Board (via email) on February 1, 2021.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), true copies
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`of the settlement agreements (Patent License Agreements and Escrow Agreement)
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`that resolve the disputes in the above-captioned inter partes review relating to the
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`Patent-in-Suit are filed herewith as confidential exhibits. There are no other
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`collateral agreements between the parties made in connection with, or in
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`contemplation of, the termination sought. Due to confidentiality provisions of these
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`Exhibits, Neodron is not permitted to share certain portions of the Escrow
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`Agreement with any party other than the Court and its Staff. Neodron understands
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`Samsung will similarly be filing a confidential exhibit (Exhibit A to the Escrow
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`Agreement), that it is not permitted to share with any party other than the Court and
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`its Staff. The Escrow Agreement filed by Neodron and Exhibit A to that agreement
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`IPR2020-00267 (Patent 8,432,173)
`IPR2020-00653 (Patent 8,432,173)
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`filed by Samsung together form the complete Escrow Agreement. The Parties have
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`conferred on this matter, and the Parties are in agreement with this procedure.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Neodron and
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`Samsung, Neodron and HP, Neodron and Lenovo, Neodron and Motorola, and
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`Neodron and Dell, are concurrently filing Joint Requests to Keep Separate, which
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`ask the Board to treat the settlement agreements as business confidential
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`information, and to keep them separate from the files of this proceeding and the files
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`of the Patent-in-Suit.
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`I.
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`Statement of Precise Relief Requested
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`The parties jointly request that the Board terminate the joined inter partes
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`review of the Patent-in-Suit, Cases IPR2020-00267 and IPR2020-00653, in its
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`entirety.
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`II. Reasons Why Termination Is Appropriate
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`Termination of this proceeding with respect to all parties is proper. This inter
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`partes review is still in an early stage. This Petition was filed on December 10, 2019.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Because all parties request
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`termination and the Board has not yet decided the merits of the proceeding, the Board
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`IPR2020-00267 (Patent 8,432,173)
`IPR2020-00653 (Patent 8,432,173)
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`should terminate the proceeding with respect to Samsung, HP, Lenovo, Motorola,
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`and Dell.
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`When there are no petitioners remaining in an inter partes review, the Board
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`may terminate the proceeding entirely. 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
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`Samsung, HP, Lenovo, Motorola, and Dell are the only petitioners in this inter partes
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`review. All parties support termination of this proceeding. With no petitioners
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`remaining in the proceeding and no final written decision on the merits, termination
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`of this proceeding entirely is appropriate.
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`The lawsuits between Neodron and Samsung, Neodron and HP, Neodron and
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`Lenovo, Neodron and Motorola, and Neodron and Dell, involving the Patent-in-Suit
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`are in the process of being dismissed concurrently with this inter partes review. The
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`parties do not contemplate any litigation or proceeding involving the Patent-in-Suit
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`in the foreseeable future.
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`III. No Future Participation by Petitioners
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`Samsung, HP, Lenovo, Motorola, and Dell will not be participating further in
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`this proceeding.
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`IV. Conclusion
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`The parties have settled all disputes relating to the Patent-in-Suit. This inter
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`partes review is in an early stage, and the Board has not entered a final written
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`IPR2020-00267 (Patent 8,432,173)
`IPR2020-00653 (Patent 8,432,173)
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`decision on the merits in this proceeding. Accordingly, the parties respectfully
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`request the Board to terminate this proceeding in its entirety.
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`Date: February 5, 2021
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` /Neil Rubin /
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`Respectfully submitted,
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`Neil Rubin (Reg. No. 67,030)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`nrubin@raklaw.com
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`Counsel for Patent Owner
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` /Marc Pensabene/
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`Marc Pensabene (Reg. No. 37,416)
`O’Melveny & Myers LLP
`7 Times Square
`Times Square Tower
`New York, NY 10036
`Phone: (212) 326-2000
`mpensabene@omm.com
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`Counsel for Petitioners for IPR2020-
`00267
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` /James M. Heintz/
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`James M. Heintz (Reg. No. 41,828)
` DLA Piper LLP (US)
` 11911 Freedom Dr., Suite 300
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`IPR2020-00267 (Patent 8,432,173)
`IPR2020-00653 (Patent 8,432,173)
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` Reston VA 20190
` Phone: (703) 773-4000
` jim.heintz@dlapiper.com
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`Counsel for Petitioners for IPR2020-
`00653
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`5
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`IPR2020-00267 (Patent 8,432,173)
`IPR2020-00653 (Patent 8,432,173)
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`February 5, 2021, by filing this document through the Patent Trial and Appeal Board
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`End to End system as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioners:
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`Marc J. Pensabene, mpensabene@omm.com
`Nicholas J. Whilt, nwhilt@omm.com
`Benjamin Haber, bhaber@omm.com
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`Counsel for Petitioners for IPR2020-00267
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`James M. Heintz, jim.heintz@dlapiper.com
`Robert Buergi, robert.buergi@dlapiper.com
`Aliza George Carrano, aliza.carrano@finnegan.com
`Philip Eklem, philip.eklem@finnegan.com
`Robert K. High, robert.high@finnegan.com
`Christopher TL Douglas, christopher.douglas@alston
`Lauren Bolcar, lauren.bolcar@alston.com
`DLA_Neodron_WDTX_IPR@us.dlapiper.com
`Finnegan_Lenovo_IPRs@finnegan.com
`Dell-Neodron-ITC@alston.com
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`Counsel for Petitioners for IPR2020-00653
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`Date: February 5, 2021
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` /Neil Rubin /
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`Neil Rubin (Reg. No. 67,030)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`nrubin@raklaw.com
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`Counsel for Patent Owner
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