`571-272-7822
`
`
`
`Paper 17
`Entered: February 19, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., MICROSOFT CORPORATION,
`SAMSUNG ELECTRONICS CO., LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-007781
`Patent 7,821,425 B2
`____________
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`QUINN, 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 C.F.R. § 42.74
`
`
`
`
`
`1 IPR2020-01119 has been joined with IPR2020-00778.
`
`
`
`IPR2020-00778
`Patent 7,821,425 B2
`
`
`INTRODUCTION
`I.
`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 8, 2021, the Parties filed a
`Joint Motion to Terminate in the joined proceeding (“Joint Motion”). Paper
`15. On February 1, 2021, we authorized the Parties, via email, to file a joint
`motion to terminate the joined proceeding. Joint Motion 1. The Parties also
`filed copies of Settlement Agreements, Patent License Agreements, an
`Escrow Agreement, and an Exhibit A to the Escrow Agreement (Ex. 2004;
`Ex. 2005; Ex. 2006; Ex. 2007; Ex. 2008; IPR2020-01119 Paper 9,2
`collectively “Settlement Agreements”) and filed a Joint Request to Keep
`Separate (Paper 16, “Joint Request”) in the joined proceeding.
`II. DISCUSSION
`Under 35 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 termination is filed.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of the joined inter partes review
`proceeding, that the filed copies of the Settlement Agreements are true
`copies, and there are no other collateral agreements between the parties
`made in connection with, or in contemplation of, the termination. Joint
`
`
`2 Exhibit A to the Escrow Agreement was filed as a paper in IPR2020-01119
`instead of as an exhibit in IPR2020-00778.
`2
`
`
`
`
`
`IPR2020-00778
`Patent 7,821,425 B2
`
`Motion 1–3. Further, the Settlement Agreements indicate they are complete
`agreements. Ex. 2004, 7; Ex. 2005, 7; Ex. 2006, 12; Ex. 2007, 12; Ex. 2008,
`13. The Parties also represent that their Settlement Agreements resolve all
`currently pending Patent Office and District Court proceedings between the
`Parties involving Patent 7,821,425. Joint Motion 1–3.
`We instituted a trial on the joined proceeding on November 23, 2020.
`Paper 12. We have not yet decided the merits of the joined proceeding, and
`a final written decision has not been entered. Notwithstanding that the
`joined proceeding has moved beyond the preliminary stage, the Parties have
`shown adequately that the termination of the joined proceeding is
`appropriate. Under these circumstances, we determine that good cause
`exists to terminate the joined proceeding with respect to the Parties.
`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. 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 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).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`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;
`
`
`
`3
`
`
`
`IPR2020-00778
`Patent 7,821,425 B2
`
`and
`FURTHER ORDERED that the Joint Request is granted, and the
`
`Settlement Agreements shall be kept separate from the file of Patent
`7,821,425, and made available only to Federal Government agencies 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).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2020-00778
`Patent 7,821,425 B2
`
`For PETITIONER:
`Adam Seitz
`Paul Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`For PATENT OWNER:
`Kent Shum
`Neil Rubin
`RUSS AUGUST & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`
`
`
`
`5
`
`
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