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Samsung Electronics Co., Ltd. v. Neodron Ltd.

Docket IPR2020-01119, Patent Trial and Appeal Board (June 17, 2020)
Christopher Ogden, Miriam Quinn, Patrick Boucher, presiding
Case TypeInter Partes Review
Patent
7821425
Patent Owner Neodron Ltd.
Petitioner Samsung Electronics Co., Ltd.
Petitioner Microsoft
...
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10 Termination Decision Document: Termination Decision Document

Document IPR2020-01119, No. 10 Termination Decision Document - Termination Decision Document (P.T.A.B. Feb. 19, 2021)
Petitioner and Patent Owner (collectively “the Parties”) have requested that the above-identified joined inter partes review proceeding be terminated pursuant to a settlement.
On February 1, 2021, we authorized the Parties, via email, to file a joint motion to terminate the joined proceeding.
The Parties also requested that the Settlement Agreements be treated as business confidential information and be kept separate from the file of Patent 7,821,425.
We determine that good cause exists 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).
Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion is granted, and that IPR2020-00778 is hereby terminated and IPR2020-01119 (the joined proceeding) is closed;
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8 Institution Decision: Trial Instituted Document

Document IPR2020-01119, No. 8 Institution Decision - Trial Instituted Document (P.T.A.B. Nov. 23, 2020)
For the reasons that follow, we institute inter partes review, and grant Petitioner’s Motion for Joinder.
As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief.
No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial.
FURTHER ORDERED that the case caption in IPR2020-00778, from now on, shall reflect joinder with this proceeding in accordance with the attached example.
Therefore the caption here has been updated to reflect that these Samsung entities are joined as Petitioner in this proceeding.
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5 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2020-01119, No. 5 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Jul. 22, 2020)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
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1 Petition: Petition for Inter Partes Review of US Patent No 7,821,425

Document IPR2020-01119, No. 1 Petition - Petition for Inter Partes Review of US Patent No 7,821,425 (P.T.A.B. Jun. 17, 2020)
“Key” In a prior ITC investigation involving the ‘790 Patent, the parties agreed to adopt the following express definition from the specification for “key”: “a touchable portion of a mechanical to electrical transducing device that is nonbistable in nature.
Each of the proposed grounds below relies upon Jahier for its teaching of a plurality of “keys.” Like the ‘425 Patent, Jahier’s “keys” are sensors within a capacitive tactile keyboard that converts mechanical touch to electrical signals.
U.S. Patent No. 7,821,425 Petition for Inter Partes Review Moreover, a PHOSITA would have understood that a signal strength comparison could similarly measure comparative counter values for each respective key.
QT60161 is also directed at solving the same problems as the ’425 Patent, including providing a more robust capacitive measurement device capable of reducing false detections and suppressing environmental noise.
A PHOSITA would have had a reasonable expectation of success in implementing this modification as it would have required only minor changes in software to employ the well-known concept of detection integration into Jahier’s comparative measurement system.
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4 Motion: Motion for Joinder to Inter Partes Review 35 USC Sec 3159c and 37 CFR Sec 42122b

Document IPR2020-01119, No. 4 Motion - Motion for Joinder to Inter Partes Review 35 USC Sec 3159c and 37 CFR Sec 42122b (P.T.A.B. Jun. 17, 2020)
The Petition here and the Apple IPR petition challenge the same claims of the ’425 patent Case IPR2020-01119 Patent No. 7,821,425 on the same grounds relying on the same prior art and evidence, including a declaration identical in substance from the same expert.1 Petitioner agrees to proceed solely on the grounds, evidence, and arguments advanced, or that will be advanced, in the Apple IPR as instituted.
Because joinder will not add any new substantive issues, delay the schedule, burden deponents, or increase needless filings, any additional costs on the Patent Owner would be minimal.
Joinder will promote efficiency by consolidating issues, avoiding wasteful duplication, and preventing inconsistency Petitioner presents identical arguments and supporting evidence as the Apple IPR.
Joinder is Appropriate The Board has previously stated that it is “mindful of a policy preference for joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be allowed as of right—if an inter partes review is instituted on the basis of a petition, for example, a party that files an identical petition will be joined to that proceeding, and thus allowed to file its own briefs and make its own arguments.”)).
For the foregoing reasons, Petitioner respectfully requests inter partes review of U.S. Patent No. 7,821,425 and joinder with Apple Inc. et al. v. Neodron Ltd.,
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7 Power of Attorney: Patent Owners Power of Attorney

Document IPR2020-01119, No. 7 Power of Attorney - Patent Owners Power of Attorney (P.T.A.B. Nov. 17, 2020)
Pursuant to 37 C.F.R. §42.10(b), Patent Owner Neodron Ltd. is an Irish company with a principal place of business at Unit 4-5, Burton Hall Road, Sandyford, Dublin 18, D18a094, hereby appoints the following practitioners as its attorneys to transact all business in the United States Patent & Trademark Office associated with the above-captioned inter partes review:
Attorneys for Petitioner Date: November 17, 2020
12424 Wilshire Blvd., 12th Fl.
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6 Mandatory Notice: Patent Owners Mandatory Notice

Document IPR2020-01119, No. 6 Mandatory Notice - Patent Owners Mandatory Notice (P.T.A.B. Nov. 17, 2020)

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