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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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`
`
`
`APPLE INC. AND MICROSOFT CORPORATION,
`Petitioners,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`
`
`
`
` Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
`
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`
`
`
`
`
`
`Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
`
`Patent Owner Neodron Ltd. and Petitioners Apple Inc. and Microsoft
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`Corporation have reached a settlement. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R.
`
`§§ 42.72 and 42.74, the parties jointly request termination of the inter partes review
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`of U.S. Patent No. 8,749,251 (“Patent-in-Suit”), Case IPR2020-00998. The parties
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`were authorized to file this Joint Motion by the Board (via email) on February 1,
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`2021.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), true copies
`
`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 Apple
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`and Neodron and Microsoft are concurrently filing Joint Requests to Keep Separate,
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`which 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 inter partes review of
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`the Patent-in-Suit, Case IPR2020-00998, in its entirety.
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`II. Reasons Why Termination Is Appropriate
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`
`
`1
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`
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`Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
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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 June 16, 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 Apple and Microsoft.
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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. Apple
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`and Microsoft are the only petitioners in this inter partes review. All parties support
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`termination of this proceeding. With no petitioners remaining in the proceeding and
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`no final written decision on the merits, termination of this proceeding entirely is
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`appropriate.
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`The lawsuits between Neodron and Apple and Neodron and Microsoft,
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`involving the Patent-in-Suit are in the process of being dismissed concurrently with
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`this inter partes review. The parties do not contemplate any litigation or proceeding
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`involving the Patent-in-Suit in the foreseeable future.
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`III. No Future Participation by Petitioners
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`Apple and Microsoft will not be participating further in this proceeding.
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`
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`2
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`Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
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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
`
` /Reza Mirzaie/
`
`
`
`
`
`Respectfully submitted,
`
`
`Reza Mirzaie (Reg. No. 69,138)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`rmirzaie@raklaw.com
`
`Counsel for Patent Owner
`
` /Adam P. Seitz/
`
`
`
`
`
`
`
`Adam P. Seitz (Reg. No. 52,206)
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Phone: (913) 777-5600
`Adam.Seitz@eriseip.com
`
`Counsel for Petitioners
`
`
`
`3
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`
`
`Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
`
`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:
`
`Adam Seitz, adam.seitz@eriseip.com
`Paul Hart, paul.hart@eriseip.com
`
`
`Date: February 5, 2021
`
` /Reza Mirzaie/
`
`
`
`
`
`Reza Mirzaie (Reg. No. 69,138)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
` rmirzaie@raklaw.com
`
`Counsel for Patent Owner
`
`4
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