Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: February 18, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SONY CORPORATION, and
`SONY MOBILE COMMUNICATIONS INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-01682
`IPR2020-01683
`Patent 8,749,251 B21
`____________
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution and
`Granting Joint Requests to Treat Settlement Agreements as
`Business Confidential Information
`37 C.F.R. § 42.74
`
`1 This Order applies to both proceedings. We exercise our discretion to
`issue one Order to be filed in each case. The parties are not authorized to
`use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`Paper 14
`Entered: February 18, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SONY CORPORATION, and
`SONY MOBILE COMMUNICATIONS INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-01682
`IPR2020-01683
`Patent 8,749,251 B21
`____________
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution and
`Granting Joint Requests to Treat Settlement Agreements as
`Business Confidential Information
`37 C.F.R. § 42.74
`
`1 This Order applies to both proceedings. We exercise our discretion to
`issue one Order to be filed in each case. The parties are not authorized to
`use this style heading for any subsequent papers.
`
`
`
`IPR2020-01682, IPR2020-01683
`Patent 8,749,251 B2
`
`
`
`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`Sony Corporation, and Sony Mobile Communications Inc. (“Petitioner”) and
`Noedron Ltd. (“Patent Owner”), (collectively “the Parties”) request 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 copies of Patent License Agreements,
`Settlement Agreements, Escrow Agreements, and an Exhibit A to the
`Escrow Agreements (Ex. 2001; Ex. 2002; Ex. 2003; Ex. 2004; Paper 12,3
`collectively “Settlement Agreements”) and filed a Joint Request to Keep
`Separate (Paper 11, “Joint Request”) in each of the above-identified
`proceedings.
`
`II. DISCUSSION
`In the Joint Motions, the Parties represent that they have reached an
`agreement to jointly seek termination of these inter partes review
`proceedings, that the filed copies of the Settlement Agreements are true
`
`
`2 For expediency, we cite to the Papers and Exhibits filed in IPR2020-01682,
`unless otherwise indicated. Similar Papers and Exhibits were filed in
`IPR2020-01683.
`3 Exhibit A to the Escrow Agreement was filed as a paper instead of as an
`exhibit. We determine this to be a harmless error. The parties are reminded
`that evidences such as the Settlement Agreement must be filed as exhibits.
`See 37 C.F.R. § 42.63(a) (“Evidence consists of affidavits, transcripts of
`depositions, documents, and things. All evidence must be filed in the form
`of an exhibit.”).
`
`
`
`2
`
`
`
`IPR2020-01682, IPR2020-01683
`Patent 8,749,251 B2
`
`copies, and there are no other collateral agreements between the parties
`made in connection with, or in contemplation of, the termination of these
`proceedings. Joint Motion 1–3. Further, the Settlement Agreements
`indicate they are complete agreements. Ex. 2001, 12; Ex. 2002, 7; Ex. 2003,
`12; Ex. 2004, 13. The Parties also represent that their disputes have been
`resolved. Joint Motion 1–3.
`We have not yet instituted a trial on the above-identified proceedings.
`Nor have we decided the merits of the proceedings, and final written
`decisions have not been entered in the proceedings. The Parties have shown
`adequately that 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
`U.S. Patent No. 8,749,251 (“the ’251 patent”). Joint Request 1–2. After
`reviewing the Settlement Agreements, 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 between the Parties 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 to Terminate are granted, and each
`of IPR2020-01682 and IPR2020-01683 is terminated with respect to
`
`
`
`3
`
`
`
`IPR2020-01682, IPR2020-01683
`Patent 8,749,251 B2
`
`Petitioner and Patent Owner; and
`
`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
`
`
`
`IPR2020-01682, IPR2020-01683
`Patent 8,749,251 B2
`
`For PETITIONER:
`John Kappos
`Nicholas Whilt
`Nancy Schroeder
`O’MELVENY & MYERS LLP
`jkappos@omm.com
`nwhilt@omm.com
`nschroeder@omm.com
`Randy Pritzker
`Marc Johannes
`WOLF GREENFIELD & SACKS P.C.
`rpritzker-ptab@wolfgreenfield.com
`mjohannes-ptab@wolfgreenfield.com
`
`For PATENT OWNER:
`Kent Shum
`Reza Mirzaie
`Neil Rubin
`Philip Wang
`C. Jay Chung
`RUSS AUGUST & KABAT
`kshum@raklaw.com
`rmirzaie@raklaw.com
`nrubin@raklaw.com
`pwang@raklaw.com
`jchung@raklaw.com
`
`
`
`5
`
`
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