`Tel: 571-272-7822
`
`
`
`
`
`Paper 9
`Date: February 9, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-01331
`Patent 7,821,502 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`IPR2020-01331
`Patent 7,821,502 B2
`
`
`With our authorization, the parties filed a Joint Motion to Terminate
`this proceeding (Paper 7) and a Joint Request to Keep Separate (Paper 8).
`With these filings the parties also filed what they describe as “a true copy of
`the settlement agreement (Patent License Agreement) that resolves the
`disputes in the above-captioned inter partes review.” Paper 7, 1; see Ex.
`2001. The parties also represent that “[t]here are no other collateral
`agreements between the parties made in connection with, or in
`contemplation of, the termination sought.” Paper 7, 1.
`In the Joint Motion to Terminate, the parties “jointly ask that the
`Board terminate the inter partes review of the Patent-in-Suit, Case IPR2020-
`01331, in its entirety.” Paper 7, 1. Under 37 C.F.R. § 42.71(a), the Board
`may “dismiss any petition,” thus terminating a preliminary proceeding. In
`addition, when the parties seek to terminate a proceeding by submitting a
`settlement agreement, “[a]ny agreement or understanding between the
`parties made in connection with, or in contemplation of, the termination of a
`proceeding shall be in writing and a true copy shall be filed with the Board.”
`37 C.F.R. § 42.74(b).
`This case is still in the preliminary proceeding stage, and the Board
`has not yet issued a decision whether to institute trial. Under these
`circumstances, we determine that it is appropriate to dismiss the Petition and
`terminate this case without rendering a decision on institution. We also
`determine that the submitted Exhibit 2001 appears to be a true copy of the
`agreement between the parties in connection with settlement of this
`proceeding. Therefore, we grant the Joint Motion to Terminate.
`
`
`
`2
`
`
`
`IPR2020-01331
`Patent 7,821,502 B2
`
`
`In the Joint Request to Keep Separate, “[t]he parties request that the
`Board treat the settlement agreement[] as business confidential information
`and keep [it] separate from the files of this proceeding and the files of the
`Patent-in-Suit.” Paper 8, 1. We find that the submitted settlement agreement
`contains confidential business information regarding the terms of the
`settlement. Ex. 2001. Accordingly, we agree that the settlement agreement
`should be treated as business confidential information and kept separate
`from the files of the involved patent, and we grant the Joint Request to Keep
`Separate.
`
`It is
`ORDERED that the Joint Motion to Terminate is granted;
`FURTHER ORDERED that the Petition is dismissed;
`FURTHER ORDERED that this proceeding is terminated as to all
`parties;
`FURTHER ORDERED that the Joint Request to Keep Separate is
`granted; and
`FURTHER ORDERED that the filed settlement agreement (Ex. 2001)
`be treated as business confidential information pursuant to 37 C.F.R.
`§ 42.74(c) and also remain designated as “Parties and Board Only” in the
`Board’s E2E system.
`
`
`
`
`
`
`3
`
`
`
`IPR2020-01331
`Patent 7,821,502 B2
`
`
`For PETITIONER:
`Adam Seitz
`Paul Hart
`ERISE IP, P.A.
`Adam.seitz@eriseip.com
`Paul.hart@eriseip.com
`
`
`For PATENT OWNER:
`Kent Shum
`Neil Rubin
`Reza Mirzaie
`C. Jay Chung
`RUSS, AUGUST, & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`jchung@raklaw.com
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
