`571-272-7822
`
`
`
`Paper 26
`Entered: February 18, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HP INC., MICROSOFT CORPORATION, DELL INC.,
`DELL PRODUCTS LP, LENOVO (UNITED STATES) INC., and
`MOTOROLA MOBILITY LLC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-00459
`Patent 8,946,574 B2
`____________
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, 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
`
`
`
`
`
`
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`
`
`INTRODUCTION
`I.
`HP Inc., Microsoft Corporation, Dell Inc., Dell Products LP, Lenovo
`(United States) Inc., and Motorola Mobility LLC., (collectively,
`“Petitioner”) and Neodron Ltd. (“Patent Owner”), (collectively “the
`Parties”), request that the above-identified inter partes review proceeding be
`terminated pursuant to a settlement. With our authorization, the Parties filed
`a Joint Motion to Terminate the above-identified proceeding (“Joint
`Motion”). Paper 24.
`The Parties also filed Settlement and License Agreements (Ex. 2011;
`Ex. 2012; Ex. 2013; Ex. 2014; Ex. 2015, collectively “Settlement
`Agreements”) and a Joint Request to Keep Separate (Paper 25, “Joint
`Request”).
`
`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.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of this inter partes review proceeding,
`that the filed copies of the Settlement Agreements are true copies, and there
`are no other collateral agreements. Joint Motion 1–3. Further, the
`Settlement Agreements indicate they are complete agreements. Ex. 2011, 9–
`10; Ex. 2012, 7; Ex. 2013, 7; Ex. 2014, 9–10; Ex. 2015, 7. The Parties also
`represent that their Settlement Agreements resolve all currently pending
`
`
`
`2
`
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`
`Patent Office and District Court proceedings between the Parties involving
`U.S. Patent No. 8,946,574 B2 (“the ’574 patent”). Joint Motion 1–3.
`We instituted a trial on the above-identified proceeding on September
`14, 2020. Paper 17. We have not yet decided the merits of the proceeding,
`and a final written decision has not been entered. Notwithstanding that the
`proceeding has moved beyond the preliminary stage, the Parties have
`adequately shown that the termination of the proceeding is appropriate.
`Under these circumstances, we determine that good cause exists to terminate
`the 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 the
`’574 patent. Joint Request 1–2. After reviewing the Settlement Agreements
`between the Parties, we find that the Settlement Agreements 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).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion is granted, and IPR2020-00459 is
`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 the ’574
`
`
`
`3
`
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`
`patent, 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
`
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`
`For PETITIONER:
`James Heintz
`Robert Buergi
`DLA PIPER (US) LLP
`Jim.heintz@dlapiper.com
`Robert.buergi@dlapiper.com
`
`Robert High
`Philip Eklem
`Aliza Carrano
`FINNEGAN, HENDERSON, FARRABOW, GARRETT & DUNNER LLP
`Robert.high@finnegan.com
`Philip.eklem@finnegan.com
`Aliza.carrano@finnegan.com
`
`Christopher Douglas
`Caleb Bean
`ALSTON & BIRD LLP
`Christopher.douglas@alston.com
`Caleb.bean@alston.com
`
`
`For PATENT OWNER:
`Kent Shum
`Neil Rubin
`RUSS AUGUST & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`
`
`
`
`5
`
`
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