Neodron LtdDownload PDFPatent Trials and Appeals BoardFeb 9, 2021IPR2020-01274 (P.T.A.B. Feb. 9, 2021) Copy Citation Trials@uspto.gov Paper 14 Tel: 571-272-7822 Date: February 9, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SONY CORPORATION, and SONY MOBILE COMMUNICATIONS INC., Petitioner, v. NEODRON LTD., Patent Owner. ____________ IPR2020-01274 Patent 7,903,092 B2 ____________ Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. ORDER Granting Joint Motion to Terminate 37 C.F.R. § 42.74 IPR2020-01274 Patent 7,903,092 B2 2 With our authorization, the parties filed a Joint Motion to Terminate this proceeding. Paper 11. With the Joint Motion, the parties filed copies of exhibits they describe as “true copies of the settlement agreements (Patent License Agreements and Escrow Agreement) that resolve the disputes in the above-captioned inter partes review relating to the Patent-in-Suit.” Id. at 1; see Exs. 20012004, Paper 13. In their Joint Motion, the parties represent that “[t]here are no other collateral agreements between the parties made in connection with, or in contemplation of, the termination sought.” Paper 11, 1. The parties further represent, in a Joint Request to Keep Separate, that “[t]he settlement agreements resolve the disputes in the above-captioned inter partes review relating to U.S. Patent No. 7,903,092.” Paper 12, 1. “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.” Id. “An 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.” 35 U.S.C. § 317(a). The settlement agreements appear to be true copies, and, after reviewing the agreements, we find that they contain confidential business information regarding the terms of settlement. See Ex. 20012004, Paper 13. The parties have not yet filed any substantive papers after the proceeding was instituted, Paper 9, and the proceeding is therefore at an early stage. We accordingly determine that it is appropriate to terminate the proceeding and to treat the filed settlement agreements as business confidential information pursuant to 35 U.S.C. § 317(b). IPR2020-01274 Patent 7,903,092 B2 3 It is ORDERED that the Joint Motion to Terminate is granted; FURTHER ORDERED that this proceeding is hereby terminated as to all parties; FURTHER ORDERED that the Joint Request to Keep Separate is granted; FURTHER ORDERED that the filed settlement agreements (Exs. 20012004, Paper 13) be treated as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and also remain designated as “Parties and Board Only” in the Board’s E2E system. IPR2020-01274 Patent 7,903,092 B2 4 For PETITIONER: John Kappos Nicholas Whilt Nancy Schroeder O’MELVENY & MYERS LLP jkappos@omm.com nwhilt@omm.com nschroeder@omm.com Randy Pritzker Marc Johannes WOLF GREENFIELD & SACKS P.C. rpritzker-ptab@wolfgreenfield.com mjohannes-ptab@wolfgreenfield.com For PATENT OWNER: Kent Shum Neil A. Rubin Reza Mirzaie Philip X. Wang C. Jay Chung RUSS AUGUST & KABAT kshum@raklaw.com nrubin@raklaw.com rmirzaie@raklaw.com pwang@raklaw.com jchung@raklaw.com Copy with citationCopy as parenthetical citation
