Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 34
`Entered: February 18, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., HP INC.,
`LENOVO (UNITED STATES) INC., MOTOROLA MOBILITY LLC,
`DELL INC., and DELL PRODUCTS LP,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-00267
`IPR2020-006531
`Patent 8,432,173 B2
`____________
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, 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
`
`
`
`
`
`1 IPR2020-00635 has been joined with IPR2020-00267.
`
`
`571-272-7822
`
`
`
`Paper 34
`Entered: February 18, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., HP INC.,
`LENOVO (UNITED STATES) INC., MOTOROLA MOBILITY LLC,
`DELL INC., and DELL PRODUCTS LP,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-00267
`IPR2020-006531
`Patent 8,432,173 B2
`____________
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, 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
`
`
`
`
`
`1 IPR2020-00635 has been joined with IPR2020-00267.
`
`
`
`IPR2020-00267, IPR2020-00653
`Patent 8,432,173 B2
`
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively “the Parties”) have
`requested that the above-identified joined inter partes review proceeding be
`terminated pursuant to a settlement. On February 5, 2021, the Parties filed a
`Joint Motion to Terminate in the joined proceeding (“Joint Motion”). Paper
`31. On February 1, 2021, we authorized the Parties, via email, to file a joint
`motion to terminate the joined proceeding. Joint Motion 1. The Parties also
`filed copies of Patent License Agreements and an Escrow Agreement (Ex.
`2004; Ex. 2005; Ex. 2006; Ex. 2007, Ex. 2008; Ex. 2009; Ex. 2010; Paper
`33, 2 collectively “Settlement Agreements”) and filed a Joint Request to
`Keep Separate (Paper 32, “Joint Request”) in IPR2020-00267.
`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.” The
`Office may also terminate the inter partes review if no petitioner remains in
`the proceeding. Id.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of the joined inter partes review
`proceeding, that the filed copies of the Settlement Agreements are true
`copies, and there are no other collateral agreements between the parties
`
`
`2 Petitioner filed Paper 33 as a paper instead of as an exhibit. Although
`evidences such as settlement agreements must be filed as exhibits, we
`determine this to be harmless error. See 37 C.F.R. § 42.63(a) (“Evidence
`consists of affidavits, transcripts of depositions, documents, and things. All
`evidence must be filed in the form of an exhibit.”).
`2
`
`
`
`
`
`IPR2020-00267, IPR2020-00653
`Patent 8,432,173 B2
`
`made in connection with, or in contemplation of, the termination. Joint
`Motion 1–4. Further, the Settlement Agreements indicate they are complete
`agreements. Ex. 2004, 12; Ex. 2005, 9–10; Ex. 2006, 9–10; Ex. 2007, 7; Ex.
`2008, 7; Ex. 2009, 12; Ex. 2010, 13. The Parties also represent that their
`Settlement Agreements resolve all currently pending Patent Office and
`District Court proceedings between the Parties involving Patent 8,432,173.
`Joint Motion 1–4.
`We instituted a trial on the joined proceeding on September 15, 2020.
`Paper 20. We have not yet decided the merits of the joined proceeding, and a
`final written decision has not been entered. Notwithstanding that the joined
`proceeding has moved beyond the preliminary stage, the Parties have shown
`that the termination of the joined proceeding is appropriate. Under these
`circumstances, we determine that good cause exists to terminate the joined
`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
`Patent 8,432,173. Joint Request 1–2. After reviewing the Settlement
`Agreements between the Parties, we find that they 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).
`
`
`
`3
`
`
`
`IPR2020-00267, IPR2020-00653
`Patent 8,432,173 B2
`
`
`III. ORDER
`For the reasons discussed above, it is
`ORDERED that the Joint Motion is granted, and the joined
`proceedings IPR2020-00267 and IPR2020-00653 are 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 Patent
`8,432,173, 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).
`
`
`
`
`
`4
`
`
`
`IPR2020-00267, IPR2020-00653
`Patent 8,432,173 B2
`
`For PETITIONER:
`
`Marc Pensabene
`Nicholas J. Whilt
`Benjamin Haber
`O’MELVENY & MYERS LLP
`mpensabene@omm.com
`nwhilt@omm.com
`bhaber@omm.com
`
`James Heintz
`Robert Buergi
`DLA PIPER LLP (US)
`jim.heintz@dlapiper.com
`robert.buergi@dlapiper.com
`
`Aliza Carrano
`Philip Eklem
`Robert High
`FINNEGAN, HENDERSON, FARABOW, GARRETT AND
`DUNNER, LLP
`aliza.carrano@finnegan.com
`philip.eklem@finnegan.com
`robert.high@finnegan.com
`
`Christopher Douglas
`Lauren Bolcar
`ALSTON & BIRD LLP
`christopher.douglas@alston.com
`lauren.bolcar@alston.com
`
`
`
`
`
`
`
`5
`
`
`
`IPR2020-00267, IPR2020-00653
`Patent 8,432,173 B2
`
`For PATENT OWNER:
`
`Kent Shum
`Neil Rubin
`Reza Mirzaie
`Philip Wang
`RUSS AUGUST & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`pwang@raklaw.com
`
`
`
`6
`
`
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