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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,
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`v.
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`NEODRON LTD.,
`Patent Owner.
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` Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
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`JOINT REQUEST TO KEEP SEPARATE PURSUANT TO 35 U.S.C.
`§ 317(b) AND 37 C.F.R. § 42.74(c)
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`Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
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`Patent Owner Neodron Ltd. and Petitioners Apple Inc. and Microsoft
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`Corporation have reached a settlement. The settlement agreements resolve the
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`disputes in the above-captioned inter partes review relating to U.S. Patent No.
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`8,749,251 (“Patent-in-Suit”). The parties jointly request that the Board treat the
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`settlement agreements as business confidential information and keep them separate
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`from the files of this proceeding and the files of the Patent-in-Suit. The parties were
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`authorized to file this Joint Motion by the Board (via email) on February 1, 2021.
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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 treat the settlement agreements as
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`business confidential information and keep them separate from the files of this
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`proceeding and the files of the Patent-in-Suit. The parties request that the settlement
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`agreements “be made available only to Federal Government agencies on written
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`request, or to any person on a showing of good cause” in accordance with 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74.
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`II. Reasons Why Relief Is Appropriate
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`The terms of the settlement agreements require the parties to treat the
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`settlement agreements as confidential information and limit their ability to share the
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`settlement agreements or disclose their content with third parties. The parties have
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`filed copies of the settlement agreements with the Board, as required by 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74. The confidential settlement agreements were filed
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`Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
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`in the PTAB E2E system to provide availability only to the Board.
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`Date: February 5, 2021
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` /Reza Mirzaie/
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`Respectfully submitted,
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`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
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`Counsel for Patent Owner
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` /Adam P. Seitz/
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`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
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`Counsel for Petitioners
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`Case No. IPR2020-00998
`U.S. Patent No. 8,749,251
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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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`Adam Seitz, adam.seitz@eriseip.com
`Paul Hart, paul.hart@eriseip.com
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`Date: February 5, 2021
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` /Reza Mirzaie/
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`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
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`Counsel for Patent Owner
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