Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 12
`Entered: February 18, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. & MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-00998
`IPR2020-01000
`Patent 8,749,251 B21
`____________
`
`
`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
`
`
`
`1 This Order addresses issues that are identical in each of the above
`identified cases. Accordingly, we exercise our discretion to issue one order
`to be filed in each case. The parties, however, are not authorized to use this
`style heading in any subsequent papers without prior authorization.
`
`
`571-272-7822
`
`
`
`Paper 12
`Entered: February 18, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. & MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-00998
`IPR2020-01000
`Patent 8,749,251 B21
`____________
`
`
`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
`
`
`
`1 This Order addresses issues that are identical in each of the above
`identified cases. Accordingly, we exercise our discretion to issue one order
`to be filed in each case. The parties, however, are not authorized to use this
`style heading in any subsequent papers without prior authorization.
`
`
`
`IPR2020-00998, IPR2020-01000
`Patent 8,749,251 B2
`
`
`INTRODUCTION
`I.
`Apple Inc. and Microsoft Corporation (“Petitioner”) and Neodron Ltd.
`(“Patent Owner”), (collectively “the Parties”) requested that the above-
`identified inter partes review proceedings be terminated pursuant to a
`settlement. With our authorization, the Parties filed a Joint Motion to
`Terminate in each of the above-identified proceedings (“Joint Motion”).
`Paper 10.2
`The Parties also filed Settlement Agreements (Exhibit 2001; Ex. 2002,
`collectively “Settlement Agreements”) and filed a Joint Request to Keep
`Separate (Paper 11, “Joint Request”) in each of the above-identified
`proceedings.
`
`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 Motions, the Parties represent that they have reached an
`agreement to jointly seek termination of the inter partes review proceedings,
`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. 2001, 7;
`
`
`2 For expediency, we cite to the Papers and Exhibits filed in IPR2020-00998,
`unless otherwise indicated. Similar Papers and Exhibits were filed in
`IPR2020-01000.
`
`
`
`2
`
`
`
`IPR2020-00998, IPR2020-01000
`Patent 8,749,251 B2
`
`Ex. 2002, 7. The Parties also represent that their Settlement Agreements
`resolve all currently pending Patent Office and District Court proceedings
`between the Parties involving U.S. Patent No. 8,749,251 B2 ( “the ’251
`patent”). Joint Motion 1–3.
`We instituted a trial on the above-identified proceedings on December
`15, 2020. Paper 8. We have not yet decided the merits of the proceedings,
`and a final written decision has not been entered. Notwithstanding that the
`proceedings have moved beyond the preliminary stage, the Parties have
`adequately shown that the termination of the proceedings is appropriate.
`Under these circumstances, we determine that good cause exists to terminate
`the proceedings 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
`’251 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 Motions are granted, and IPR2020-00998
`and IPR2020-01000 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
`
`
`
`3
`
`
`
`IPR2020-00998, IPR2020-01000
`Patent 8,749,251 B2
`
`FURTHER ORDERED that the Joint Requests are granted, and the
`
`Settlement Agreements shall be kept separate from the file of the ’251
`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
`
`
`
`IPR2020-00998, IPR2020-01000
`Patent 8,749,251 B2
`
`For PETITIONER:
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`Adam.Seitz@eriseip.com
`Paul.Hart@eriseip.com
`
`
`For PATENT OWNER:
`
`Kent Shum
`Neil. A. Rubin
`Reza Mirzaie
`C. Jay Chung
`Philip X. Wang
`RUSS AUGUST & KABAT
`kshum @taklaw.com
`nrubin@raklaw.com
`rmitzaie@raklaw.com
`jchung@raklaw.com
`pwang@raklaw.com
`
`
`
`
`5
`
`
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