Trials@uspto.gov
`571-272-7822
`
`Paper 36
`Entered: February 18, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG ELECTRONICSCoO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,INC.,
`DELL INC., DELL PRODUCTSLP,
`LENOVO(UNITED STATES) INC.; and HP INC.,
`Petitioners,
`
`Vv.
`
`NEODRONLTD.,
`Patent Owner.
`
`IPR2020-00515'
`Patent 9,024,790 B2
`
`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 and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 CER. § 42.74
`
`1 Dell Inc., Dell Products LP, Lenovo (United States) Inc., and HP Inc. were
`joined asaparty to this proceeding via a Motion for Joinder in IPR2020-
`00731.
`
`
`571-272-7822
`
`Paper 36
`Entered: February 18, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG ELECTRONICSCoO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,INC.,
`DELL INC., DELL PRODUCTSLP,
`LENOVO(UNITED STATES) INC.; and HP INC.,
`Petitioners,
`
`Vv.
`
`NEODRONLTD.,
`Patent Owner.
`
`IPR2020-00515'
`Patent 9,024,790 B2
`
`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 and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 CER. § 42.74
`
`1 Dell Inc., Dell Products LP, Lenovo (United States) Inc., and HP Inc. were
`joined asaparty to this proceeding via a Motion for Joinder in IPR2020-
`00731.
`
`
`
`IPR2020-00515
`Patent 9,024,790 B2
`
`I.
`
`INTRODUCTION
`
`SamsungElectronics Co., Ltd., Samsung Electronics America, Inc.,
`
`Dell Inc., Dell Products LP, Lenovo (United States) Inc., and HP Inc.
`
`(collectively, “Petitioner”) and Neodron Ltd. (“Patent Owner”), (collectively
`
`“the Parties’) request that the above-identified joined inter partes review
`
`proceeding be terminated pursuant to a settlement. With our authorization,
`
`the Parties filed a Joint Motion to Terminate in the joined proceeding (“Joint
`Motion”). Paper 33.
`.
`TheParties also filed copies of Patent License Agreements, a
`
`Settlement Agreement, Settlement and License Agreements, an Escrow
`
`Agreement, and an Exhibit A to the Escrow Agreement (Ex. 2005; Ex. 2006;
`Ex. 2007; Ex. 2008; Ex. 2009; Ex. 2010; Paper 35,” collectively “Settlement
`
`Agreements”) and filed a Joint Request to Keep Separate (Paper 34, “Joint
`
`Request”) in the joined proceeding.
`
`II.
`
`DISCUSSION
`
`Under35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for terminationis filed.”It is
`
`also provided in 35 U.S.C. § 317(a) that if no petitioner remainsin the inter
`
`partes review, the Office may terminate the review.
`
`* Exhibit A to the Escrow Agreement wasfiled as a paper instead of as an
`exhibit. We determinethis to be a harmless error. The parties are reminded
`that evidences such as the Settlement Agreements mustbe filed as exhibits.
`See 37 C.F.R. § 42.63(a) (“Evidenceconsists of affidavits, transcripts of
`depositions, documents, and things. All evidence must befiled in the form
`of an exhibit.”).
`
`
`
`IPR2020-00515
`Patent 9,024,790 B2
`
`In the Joint Motion, the Parties represent that they have reached an
`
`agreementto jointly seek termination of the joined inter partes review
`
`proceeding, that the filed copies of the Settlement Agreements are true
`copies, andthere are no other collateral agreements betweenthe parties
`made in connection with, or in contemplation of, the termination. Joint
`
`Motion 1-3. Further, the Settlement Agreements indicate they are complete
`
`agreements. Ex. 2005, 12; Ex. 2006, 7; Ex. 2007, 9-10; Ex. 2008, 9-10;
`
`Ex 2009, 12; Ex. 2010, 13. The Parties also represent that their Settlement
`
`Agreementsresolveall currently pending Patent Office and District Court
`proceedings betweenthe Parties involving U.S. Patent No. 9,024,790 (the
`
`°790 patent”). Joint Motion 1-3.
`
`Weinstituted a trial on the joined proceeding on July 31, 2020. Paper
`
`13. We have not yet decided the merits of the joined proceeding, andafinal
`
`written decision has not been entered. Notwithstanding that the joined
`
`proceeding has moved beyondthe preliminary stage, the Parties have shown
`adequately that the termination of the joined proceeding is appropriate.
`
`Under these circumstances, we determine that good causeexists to terminate
`
`the joined proceeding with respectto the Parties.
`
`The Parties also requested that the Settlement Agreements be treated
`
`as business confidential information and be kept separate from thefile of the
`
`°790 patent. Joint Request 1-2. After reviewing the Settlement Agreements
`
`between the Parties, we find that the Settlement Agreements contain
`
`confidential business information regarding the terms of settlement. We
`
`determine that good causeexists to treat the Settlement Agreements as
`
`business confidential information pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c).
`
`
`
`IPR2020-00515
`Patent 9,024,790 B2
`
`This Order does not constitute a final written decision pursuant to 35
`
`U.S.C. § 318(a).
`
`Il. ORDER
`
`Accordingly, for the reasons discussed above,it is:
`
`ORDEREDthatthe Joint Motion is granted, and the joined
`
`proceedings IPR2020-00515 and FPR2020-00731 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 ORDEREDthatthe Joint Request is granted, and the
`
`Settlement Agreements shall be kept separate from the file of Patent
`
`9,024,790, and madeavailable only to Federal Governmentagencies 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); and
`
`FURTHER ORDEREDthat a copy of this TERMINATIONshall be
`
`entered into the record of IPR2020-00731.
`
`
`
`IPR2020-00515
`Patent 9,024,790 B2
`
`For PETITIONER:
`
`Christopher Douglas
`Lauren Bolcar
`ALSTON & BIRD LLP
`Christopher.douglas@alston.com
`Lauren.bolcar@alston.com
`James Heintz
`Robert Duergi
`DLA Piper LLP (US)
`Jim.heintz@dlapiper.com
`Robert.duergi@dlapiper.com
`Aliza Carrano
`Philip Eklem
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT AND DUNNER, LLP
`Aliza.carrano@finnegan.com
`Philip.eklem@finnegan.com
`
`For PATENT OWNER:
`
`Kent Shum
`Neil A. Rubin
`Philip Wang
`Neil Rubin
`C. Jay Chung
`RUSS AUGUST & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`nrubin@raklaw.com
`pwang@raklaw.com
`jchung@raklaw.com
`
`
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