`571.272.7822
`
`
`
`
`
`Paper 8
`Entered: October 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PANASONIC CORPORATION,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`____________
`
`
`
`IPR2021-01115
`Patent 8,946,574 B2
`____________
`
`
`Before, MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`TERMINATION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`IPR2021-01115
`Patent 8,946,574 B2
`
`
`INTRODUCTION
`I.
`With the Board’s prior authorization, Panasonic Corporation and
`Neodron Ltd. (collectively “the Parties”) filed a Joint Motion By Petitioner
`and Patent Owner to Terminate the above-captioned preliminary proceeding.
`Paper 6 (“Joint Motion”). In support of the Joint Motion, the Parties filed a
`copy of a written, confidential “SETTLEMENT AND LICENSE
`AGREEMENT.” Ex. 1020 (“Settlement Agreement”). The Parties also
`filed a Joint Request to File Settlement Agreement as Confidential Business
`Information. Paper 7 (“Joint Request”).
`
`II. DISCUSSION
`In the Joint Motion, the Parties state that they “have entered into a
`confidential Settlement and License Agreement . . . , which . . . requires both
`parties to terminate all disputes, including (i) Inter Partes Review
`Proceeding No. IPR2021-01115, and (ii) Neodron Ltd. v. Panasonic
`Corporation, et al., in the Eastern District of Texas, Civil Action No. 2:20-
`cv-00241-JRP-RSP.” Joint Motion 2. The parties further state that “the
`confidential Agreement between the parties has been made in writing, . . . a
`true and correct copy is being filed with the Patent Office with this Motion,”
`and “[t]here are no other collateral agreements between the parties made in
`connection with, or in contemplation of, the termination sought.” Id. at 2–3.
`There are strong public policy reasons to favor settlement between the
`parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg.
`64,280 (Nov. 21, 2019). Here, the Parties assert that
`termination of this inter partes review is appropriate because (i)
`the proceeding is at a sufficiently early stage; (ii) the parties
`have settled their disputes; (iii) the parties have agreed to
`dismiss, and already have dismissed the related litigation; and
`
`2
`
`
`
`IPR2021-01115
`Patent 8,946,574 B2
`
`
`(iv) the parties to this inter partes review agree that it should be
`terminated.
`Joint Motion 3. For at least these reasons, we determine that good cause
`exists and that it is appropriate to dismiss the petition and terminate the
`preliminary proceeding as to the Parties, without rendering a decision on
`institution or a final written decision. See 37 C.F.R. § 42.74.
`In the Joint Request, the Parties jointly request that the Settlement
`Agreement “is treated as confidential business information, kept separate
`from the files of the involved patent, and made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause.” Joint Request 2.
`After reviewing the Settlement Agreement between the Parties, we
`find that the Settlement Agreement contains confidential business
`information regarding the terms of settlement. Thus, we determine that good
`cause exists to treat the Settlement Agreement (Ex. 1020) between the
`Parties as business confidential information under 37 C.F.R. § 42.74(c), to
`keep it separate from the files of the involved patent and associated
`preliminary proceeding, and to limit its availability as requested by the
`Parties.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate is granted;
`FURTHER ORDERED that the preliminary proceeding in
`IPR2021-01115 is terminated and its petition is dismissed; and
`
`3
`
`
`
`IPR2021-01115
`Patent 8,946,574 B2
`
`
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Confidential Business Information is granted, and the
`Settlement Agreement shall remain designated as “Parties and Board Only”
`in Board’s filing system, shall made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause,
`and shall be kept separate from the files of the involved patents and
`associated preliminary proceedings, pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c).
`
`
`4
`
`
`
`IPR2021-01115
`Patent 8,946,574 B2
`
`For PETITIONER:
`
`Christopher Douglas
`Christopher.douglas@alston.com
`
`H. James Abe
`James.abe@alston.com
`
`Caleb Bean
`Caleb.bean@alston.com
`
`For PATENT OWNER:
`
`Reza Mirzaie
`rmirzaie@raklaw.com
`
`Kristopher Davis
`kdavis@raklaw.com
`
`C. Jay Chung
`jchung@raklaw.com
`
`
`
`
`
`5
`
`
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