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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PANASONIC CORPORATION
`Petitioner
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`v.
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`NEODRON LTD.
`Patent Owner
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`Case IPR2021-01115
`Patent No. 8,946,574
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`JOINT MOTION BY PETITIONER AND PATENT OWNER TO
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 AND 37
`C.F.R. § 42.74
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`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`1
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Panasonic
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`Corporation (“Panasonic”) and Patent Owner Neodron Ltd. (“Neodron”) jointly
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`request termination of the Inter Partes Review of U.S. Patent No. 8,946,574, Case
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`No. IPR2021-01115, without prejudice, and request that the settlement agreement
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`be treated as confidential information pursuant to 35 U.S.C. § 317(b). The Board
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`authorized the parties to file this Joint Request on October 4, 2021-via e-mail.
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`Termination of this inter partes review is appropriate at this time. Pursuant
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`to 35 U.S.C. § 317(a), this inter partes review “shall be terminated with respect to
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`petitioner upon this request, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Petitioner notes that Patent
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`Owner has not filed a Preliminary Response in this case and the Board has not yet
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`rendered an institution decision. Moreover, no motions or petitions are outstanding
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`at this time.
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`The parties have entered into a confidential Settlement and License
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`Agreement (“Agreement”), which is submitted herewith as Exhibit 1020 and
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`requires both parties to terminate all disputes, including (i) Inter Partes Review
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`Proceeding No. IPR2021-01115, and (ii) Neodron Ltd. v. Panasonic Corporation,
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`et al., in the Eastern District of Texas, Civil Action No. 2:20-cv-00241-JRP-RSP
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`(“the related litigation”). There are no other collateral agreements between the
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`parties made in connection with, or in contemplation of, the termination sought.
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`2
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`Aside from these proceedings Petitioner is not aware of any other related litigation
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`or related proceeding currently before the Office. The lawsuit between Neodron
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`and Panasonic, involving the Patent-in-Suit has already been dismissed. The
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`parties do not contemplate any litigation or proceeding involving the Patent-in-Suit
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`in the foreseeable future.
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`Therefore, termination of this inter partes review is appropriate because (i)
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`the proceeding is at a sufficiently early stage; (ii) the parties have settled their
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`disputes; (iii) the parties have agreed to dismiss, and already have dismissed the
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`related litigation; and (iv) the parties to this inter partes review agree that it should
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`be terminated.
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`As set forth in 35 U.S.C. § 317 and 37 C.F.R. § 42.74, the confidential
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`Agreement between the parties has been made in writing, and a true and correct
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`copy is being filed with the Patent Office with this Motion as Panasonic Exhibit
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`1020. As stated in 35 U.S.C. § 317(a), because Panasonic and Neodron hereby
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`requests this termination, no estoppel under 35 U.S.C. § 315(e) shall attach as to
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`Patent Owner. Further, a request to treat the confidential Agreement as business
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`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is filed
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`concurrently herewith.
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`Therefore, Panasonic Corporation respectfully requests termination of the
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`Inter Partes Review of U.S. Patent No. 8,946,574, Case No. IPR2021-01115.
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`3
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`Dated: October 5, 2021
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`Dated: October 5, 2021
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`Respectfully Submitted,
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`/ Christopher TL Douglas /
`Christopher TL Douglas, Reg. No. 56,950
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`/ Reza Mirzaie /
`Reza Mirzaie, Reg. No. 69,138
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the above-captioned “JOINT
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`MOTION BY PETITIONERS AND PATENT OWNER TO TERMINATE
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`PROCEEDING” was served in its entirety on 5th day of October 2021 pursuant to
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`agreement via email to counsel for Patent Owner Neodron Ltd. at:
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`Reza Mirzaie
`Email: rmirzaie@raklaw.com
`Kristopher R. Davis
`Email: kdavis@raklaw.com
`C. Jay Chung
`Email: jchung@raklaw.com
`Email: rak_neodron@raklaw.com
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`By:
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`/ Christopher TL Douglas /
`Christopher TL Douglas, Reg. No. 56,950
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`5
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