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NEODRON LTD., v. Apple, Inc.

Docket 6:20-cv-00116, Texas Western District Court (Feb. 14, 2020)
Judge Alan D Albright, presiding
Patent
DivisionWaco
FlagsCLOSED, PATENT, STAYED
Cause35:271 Patent Infringement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
7821425; 7903092; 8749251; 9411472
7821425
790309287492519411472
Plaintiff NEODRON LTD.
Defendant Apple, Inc.
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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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No. 10 Unopposed MOTION to Stay Case Pending ITC Determination by Apple, Inc

Document NEODRON LTD., v. Apple, Inc., 6:20-cv-00116, No. 10 (W.D.Tex. Mar. 30, 2020)
Motion to Stay Pending ITC Investigation
Defendant Apple Inc. (“Apple”) respectfully moves this Court pursuant to 28 U.S.C. § 1659 and its inherent powers to control its docket for a stay of all proceedings in the above- captioned case until the determination of the United States International Trade Commission (“ITC”) in a parallel proceeding becomes final.
Pursuant to 28 U.S.C. § 1659, district court patent claims that involve the same issues as a parallel ITC proceeding are subject to a mandatory stay.
In a civil action involving parties that are also parties to a proceeding before the United States International Trade Commission under section 337 of the Tariff Act of 1930, at the request of a party to the civil action that is also a respondent in the proceeding before the Commission, the district court shall stay, until the determination of the Commission becomes final, proceedings in the civil action with respect to any claim that involves the same issues involved in the proceeding before the Commission, but only if such request is made within – (1) 30 days after the party is named as a respondent in the proceeding before the Commission, or (2) 30 days after the district court action is filed, whichever is later.
A stay issued under this statute remains in effect during any appeals and “until the Commission proceedings are no longer subject to judicial review.” In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007).
For the foregoing reasons, Apple respectfully requests that the Court enter the attached proposed order and stay all proceedings in the Texas action until the determination of the ITC action becomes final, including any appeals and until the Commission proceedings are no longer subject to judicial review.
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No. 5 COMPLAINT ( Filing fee $ 400 receipt number 0542-13216455)

Document NEODRON LTD., v. Apple, Inc., 6:20-cv-00116, No. 5 (W.D.Tex. Feb. 14, 2020)
Complaint
Beyond just providing greater usability to smartphones, tablets and notebooks, touchscreens now fill our lives in public and private spaces, from our homes and cars to the restaurants and stores we visit.
By making, using, offering for sale, selling and/or importing into the United States the Accused Products, Defendant has injured Neodron and is liable for infringement of the ’425 Patent pursuant to 35 U.S.C. § 271.
On information and belief, Defendant makes, uses, offers for sale, sells, and/or imports certain products (“Accused Products”), such as the Apple iPhone 11, that directly infringe, literally and/or under the doctrine of equivalents, claims 1–14 of the ’092 Patent.
By making, using, offering for sale, selling and/or importing into the United States the Accused Products, Defendant has injured Neodron and is liable for infringement of the ’092 Patent pursuant to 35 U.S.C. § 271.
By making, using, offering for sale, selling and/or importing into the United States the Accused Products, Defendant has injured Neodron and is liable for infringement of the ’251 Patent pursuant to 35 U.S.C. § 271.
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