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Apple Inc. v. Neodron Ltd.

Docket IPR2020-00778, Patent Trial and Appeal Board (Apr. 16, 2020)
Christopher Ogden, Miriam Quinn, Patrick Boucher, presiding
Case TypeInter Partes Review
Patent
7821425
Patent Owner Neodron Ltd.
Petitioner Apple Inc.
Petitioner Samsung Electronics
...
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17 Termination Decision Document: Termination Decision Document

Document IPR2020-00778, No. 17 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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12 Order: DECISIONInstitution of Inter Partes Review and Grant of Motion for Joinder35 USC ¿¿ 31437 CFR ¿¿ 42122b

Document IPR2020-00778, No. 12 Order - DECISIONInstitution of Inter Partes Review and Grant of Motion for Joinder35 USC ¿¿ 31437 CFR ¿¿ 42122b (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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11 Order: SCHEDULING ORDER

Document IPR2020-00778, No. 11 Order - SCHEDULING ORDER (P.T.A.B. Sep. 14, 2020)
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
The parties are further directed to the Board’s Guidance on Motions to Amend in view of Aqua Products (https://go.usa.gov/xU6YV), and Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential).
The Board defines a LEAP practitioner as a patent agent or attorney having three (3) or fewer substantive oral arguments in any federal tribunal,
Patent 7,821,425 B2 including PTAB, and seven (7) or fewer years of experience as a licensed attorney or agent.3 The Board encourages parties to participate in its LEAP program.
In exchange, the Board will grant up to fifteen minutes of additional argument time to that party, depending on the length of the proceeding and the PTAB’s hearing schedule.
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10 Decision Granting Institution: DECISIONGranting Institution of Inter Partes Review

Document IPR2020-00778, No. 10 Decision Granting Institution - DECISIONGranting Institution of Inter Partes Review (P.T.A.B. Sep. 14, 2020)
Petitioner proffers that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development and/or testing of touch sensors, human-machine interaction and interfaces, and/or graphical user interface, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4–5 (citing Givargis Decl. ¶ 31–33).
Patent 7,821,425 B2 Consequently, at this juncture, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that independent claims 7, 16, 25, and 33 are unpatentable as obvious over Jahier.
Patent 7,821,425 B2 Having reviewed the information presented in the Petition we determine that Petitioner, for claims 12–14, 20–23, 26–28, 30, 36, and 38, has demonstrated a reasonable likelihood of prevailing in its challenge of unpatentability.
Patent 7,821,425 B2 among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. (citation omitted).
If the ITC Investigation were in a more advanced state, we expect Patent Owner would have been able to identify overlapping issues at the time it filed its Preliminary Response without resorting to such speculation.
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4 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2020-00778, No. 4 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Apr. 21, 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.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2020-00778 Patent 7,821,425 mediation, etc.) was used and the general result.
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15 Motion: Joint Motion To Terminate Inter Partes Review

Document IPR2020-00778, No. 15 Motion - Joint Motion To Terminate Inter Partes Review (P.T.A.B. Feb. 8, 2021)
Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, the parties jointly request termination of the joined inter partes review of U.S. Patent No. 7,821,425 (“Patent-in-Suit”), Cases IPR2020- 00778 and IPR2020-01119.
The parties were authorized to file this Joint Motion by the Board (via email) on February 1, 2021.
There are no other collateral agreements between the parties made in connection with, or in contemplation of, the termination sought.
Due to confidentiality provisions of these Exhibits, Neodron is not permitted to share certain portions of the Escrow Agreement with any party other than the Court and its Staff.
This inter partes review is in an early stage, and the Board has not entered a final written decision on the merits in this proceeding.
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16 Other Not for motions: Joint Request To Keep Separate

Document IPR2020-00778, No. 16 Other Not for motions - Joint Request To Keep Separate (P.T.A.B. Feb. 8, 2021)
The settlement agreements resolve the disputes in the above-captioned inter partes review relating to U.S. Patent No. 7,821,425 (“Patent-in-Suit”).
The parties were authorized to file this Joint Motion by the Board (via email) on February 1, 2021.
Statement of Precise Relief Requested The parties jointly request that the Board treat the settlement agreements as business confidential information and keep them separate from the files of this proceeding and the files of the Patent-in-Suit.
The parties request that the settlement agreements “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.
The confidential settlement agreements were filed in the PTAB E2E system to provide availability only to the Board.
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