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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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`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SONY CORPORATION; AND
`SONY MOBILE COMMUNICATIONS INC.,
`Petitioners,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`
`
`
`
` Case No. IPR2020-01683
`U.S. Patent No. 8,749,251
`
`
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`Case No. IPR2020-01683
`U.S. Patent No. 8,749,251
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`Patent Owner Neodron Ltd. and Petitioners Samsung Electronics Co., Ltd. and
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`Samsung Electronics America, Inc. (collectively “Samsung”), and Sony Corporation
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`and Sony Mobile Communications Inc. (collectively “Sony”) have reached a
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`settlement. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, the
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`parties jointly request termination of the inter partes review of U.S. Patent No.
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`8,749,251 (“Patent-in-Suit”), Case IPR2020-01683. The parties were authorized to
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`file this Joint Motion by the Board (via email) on February 1, 2021.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), true copies
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`of the settlement agreements (Patent License Agreements and Escrow Agreement)
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`that resolve the disputes in the above-captioned inter partes review relating to the
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`Patent-in-Suit are filed herewith as confidential exhibits. There are no other
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`collateral agreements between the parties made in connection with, or in
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`contemplation of, the termination sought. Due to confidentiality provisions of these
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`Exhibits, Neodron is not permitted to share certain portions of the Escrow
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`Agreement with any party other than the Court and its Staff. Neodron understands
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`Samsung will similarly be filing a confidential exhibit (Exhibit A to the Escrow
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`Agreement), that it is not permitted to share with any party other than the Court and
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`its Staff. The Escrow Agreement filed by Neodron and Exhibit A to that agreement
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`filed by Samsung together form the complete Escrow Agreement. The Parties have
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`conferred on this matter, and the Parties are in agreement with this procedure.
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`1
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`Case No. IPR2020-01683
`U.S. Patent No. 8,749,251
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Neodron and
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`Samsung and Neodron and Sony are concurrently filing Joint Requests to Keep
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`Separate, which ask the Board to treat the settlement agreements as business
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`confidential information, and to keep them separate from the files of this proceeding
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`and the files 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 IPR2020-01683, in its entirety.
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`II. Reasons Why Termination Is Appropriate
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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 September 24, 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 Samsung and Sony.
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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.
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`Samsung and Sony are the only petitioners in this inter partes review. All parties
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`Case No. IPR2020-01683
`U.S. Patent No. 8,749,251
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`support termination of this proceeding. With no petitioners remaining in the
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`proceeding and no final written decision on the merits, termination of this
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`proceeding entirely is appropriate.
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`The lawsuits between Neodron and Samsung and Neodron and Sony,
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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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`Samsung and Sony will not be participating further in this proceeding.
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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/
`
`
`
`
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`Respectfully submitted,
`
`
`Reza Mirzaie (Reg. No. 69,138)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
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`
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`3
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`Case No. IPR2020-01683
`U.S. Patent No. 8,749,251
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` rmirzaie@raklaw.com
`
`Counsel for Patent Owner
`
` /John Kappos/
`
`
`
`
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`
`
`John Kappos (Reg. No. 37,861)
`O’Melveny & Myers LLP
`610 Newport Center Drive, 17th Floor
`Newport Beach, California 92660
`Phone: (949) 823-6954
`jkappos@omm.com
`
`Counsel for Samsung Electronics Co.,
`Ltd. and Samsung Electronics
`America, Inc.
`
` /Randy Pritzker/
`
`
`
`
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`
`
`Randy Pritzker (Reg. No. 35,986)
`Wolf Greenfield & Sacks, P.C.
`600 Atlantic Ave.
`Boston, MA 02210
`Phone: (617) 646-8000
`RPritzker-
`PTAB@wolfgreenfield.com
`
`Counsel for Sony Corporation and
`Sony Mobile Communications Inc.
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`4
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`Case No. IPR2020-01683
`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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`John Kappos, jkappos@omm.com
`Nicholas Whilt, nwhilt@omm.com
`Nancy Schroeder, nschroeder@omm.com
`Randy Pritzker, rpritzker-ptab@wolfgreenfield.com
`Marc Johannes, mjohannes-ptab@wolfgreenfield.com
`NeodronSamsungOMM@omm.com
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`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
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`5
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