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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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`HP INC., MICROSOFT CORPORATION, DELL INC., DELL PRODUCTS LP,
`LENOVO (UNITED STATES) INC, AND MOTOROLA MOBILITY LLC.
`Petitioners,
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`v.
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`NEODRON LTD.,
`Patent Owner.
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` Case No. IPR2020-00459
`U.S. Patent No. 8,946,574
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`Case No. IPR2020-00459
`U.S. Patent No. 8,946,574
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`Patent Owner Neodron Ltd. and Petitioners HP Inc., Microsoft Corporation,
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`Dell Inc., Dell Products LP, (collectively “Dell”), Lenovo (United States) Inc., and
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`Motorola Mobility LLC have reached a settlement. Pursuant to 35 U.S.C. § 317(a)
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`and 37 C.F.R. §§ 42.72 and 42.74, the parties jointly request termination of the inter
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`partes review of U.S. Patent No. 8,946,574 (“Patent-in-Suit”), Case IPR2020-
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`00459. The parties were authorized to file this Joint Motion by the Board (via email)
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`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) that resolve the disputes
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`in the above-captioned inter partes review relating to the Patent-in-Suit are filed
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`herewith as confidential exhibits. There are no other collateral agreements between
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`the parties made in connection with, or in contemplation of, the termination sought.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Neodron and HP,
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`Neodron and Microsoft, Neodron and Dell, Neodron and Lenovo, and Neodron and
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`Motorola are concurrently filing Joint Requests to Keep Separate, which ask the
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`Board to treat the settlement agreements as business confidential information, and
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`to keep them separate from the files of this proceeding and the files of the Patent-in-
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`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 inter partes review of
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`Case No. IPR2020-00459
`U.S. Patent No. 8,946,574
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`the Patent-in-Suit, Case IPR2020-00459, in its 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 February 14, 2020.
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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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`should terminate the proceeding with respect to HP, Microsoft, Dell, Lenovo, and
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`Motorola.
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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. HP,
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`Microsoft, Dell, Lenovo, and Motorola 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 HP, Neodron and Microsoft, Neodron and
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`Dell, Neodron and Lenovo, and Neodron and Motorola, 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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`Case No. IPR2020-00459
`U.S. Patent No. 8,946,574
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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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`HP, Microsoft, Dell, Lenovo, and Motorola will not be participating further
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`in 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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`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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`Case No. IPR2020-00459
`U.S. Patent No. 8,946,574
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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
`Reston VA 20190
`Phone: (703) 773-4000
`jim.heintz@dlapiper.com
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`Counsel for Petitioners
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`Case No. IPR2020-00459
`U.S. Patent No. 8,946,574
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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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`James Heintz, jim.heintz@dlapiper.com
`Robert Buergi, robert.buergi@dlapiper.com
`Robert High, robert.high@finnegan.com
`Philip Eklem, philip.eklem@finnegan.com
`Aliza Carrano, aliza.carrano@finnegan.com
`Christopher Douglas, christopher.douglas@alston.com
`Caleb Bean, caleb.bean@alston.com
`DLA_Neodron_WDTX_IPR@us.dlapiper.com
`Finnegan_Lenovo_IPRs@finnegan.com
`Dell-Neodron-ITC@alston.com
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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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