throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 11
`Date: January 3, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`
`IPR2021-01160 (Patent 8,749,251 B2)
` IPR2021-01161 (Patent 8,749,251 B2)1
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD,
`Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317(a),(b); 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`1 This Order addresses issues that are the same in each of the
`above-identified proceedings. We exercise our discretion to issue one order
`for all of the above-identified proceedings. The proceedings have not been
`consolidated, and the parties are not authorized to use this caption format.
`
`

`

`IPR2021-01160 (Patent 8,749,251 B2)
`IPR2021-01161 (Patent 8,749,251 B2)
`
`
`I.
`INTRODUCTION
`With the Board’s prior authorization, Petitioner STMicroelectronics,
`Inc. and Patent Owner Neodron Ltd. (collectively “the Parties”) filed, in
`each of the above-identified proceedings, a Joint Motion to Terminate Inter
`Partes Review. See Paper 10 (“Motion”); Ex. 2001.2 The Parties also filed
`a true copy of a release agreement (Ex. 2002, “Settlement Agreement”) and
`a Joint Request to Keep Separate. See Paper 9 (“Request”).
`
`II. DISCUSSION
`The Motion states: “Patent Owner Neodron Ltd. and Petitioner
`
`STMicroelectronics, Inc. have reached a settlement.” Motion 1. The
`Motion further states: “a true copy of the settlement agreement that resolves
`the disputes in the above-captioned inter partes review relating to the Patent-
`in-Suit is filed herewith as an exhibit,” and “[t]here are no other collateral
`agreements between the parties made in connection with, or in
`contemplation of, the termination sought.” Id. at 1–2. The Motion further
`states that “[t]he parties jointly request that the Board terminate this inter
`partes review of the Patent-in-Suit, in its entirety.” Id. at 2; see also id. at 1
`(“the parties jointly request termination of the inter partes review of U.S.
`Patent No. 8,749,251 (‘Patent-in-Suit’).”).
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement, unless the Board has already decided the
`merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86
`
`
`2 For purposes of expediency, we cite to papers and exhibits filed in
`IPR2021-01160, unless otherwise noted. The Parties filed similar papers
`and exhibits in each of the above-identified proceedings.
`
`-2-
`
`
`
`

`

`IPR2021-01160 (Patent 8,749,251 B2)
`IPR2021-01161 (Patent 8,749,251 B2)
`
`(November 2019).3 Here, although the Board has instituted inter partes
`review of the challenged patents, the Board has not decided the merits of
`these proceedings. Under these circumstances, we grant the Motion to
`terminate in each proceeding. See Motion 2 (“Because all parties request
`termination and the Board has not yet decided the merits of the proceeding,
`the Board should terminate the proceeding.”).
`The Parties also “jointly 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.” Request 2. The
`Parties further “request that the settlement agreement ‘be made available
`only to Federal Government agencies on written request, or to any person on
`a showing of good cause’ in accordance with 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74.” Id.
`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. 2002) between the
`Parties as business confidential information under 35 U.S.C. § 317(b) and
`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.
`
`III. ORDER
`In view of the foregoing, it is:
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`-3-
`
`
`
`

`

`IPR2021-01160 (Patent 8,749,251 B2)
`IPR2021-01161 (Patent 8,749,251 B2)
`
`ORDERED that the Joint Motion to Terminate Inter Partes Review in
`
`each of the above-identified proceedings is granted, and IPR2021-01160 and
`IPR2021-01161 are terminated with respect to Petitioner and Patent Owner,
`pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72;
`
`FURTHER ORDERED that the Joint Request to Keep Separate in
`each of the above-identified proceedings is granted; and
`FURTHER ORDERED that the Settlement Agreement in each
`proceeding shall be kept separate from the files of U.S. Patent No. 8,749,251
`B2, and will be made available only under the provisions of 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`
`-4-
`
`

`

`IPR2021-01160 (Patent 8,749,251 B2)
`IPR2021-01161 (Patent 8,749,251 B2)
`
`For PETITIONER:
`
`Tyler Bowen
`PERKINS COIE LLP
`Bowen-ptab@perkinscoie.com
`
`For PATENT OWNER:
`
`Reza Mirzaie
`Kristopher Davis
`C. Jay Chung
`RUSS AUGUST & KABAT
`rmirzaie@raklaw.com
`kdavis@raklaw.com
`jchung@raklaw.com
`
`
`
`
`
`
`
`-5-
`
`

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