Neodron Ltd

Patent Trials and Appeals Board

Jan 4, 2022

IPR2021-01322 (P.T.A.B. Jan. 4, 2022)

Trials@uspto.gov Paper 8 571-272-7822 Entered: January 4, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CYPRESS SEMICONDUCTOR CORP. Petitioner, v. NEODRON LTD. Patent Owner. ____________ IPR2021-01322 Patent 9,024,790 B2 Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and SCOTT B. HOWARD, Administrative Patent Judges. QUINN, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial and Granting Joint Request to Treat Settlement Agreement as Business Confidential Information 37 C.F.R. § 42.74 IPR2021-01322 Patent 9,024,790 B2 2 I. INTRODUCTION Petitioner and Patent Owner (collectively “the Parties”) have requested that the above-identified joined inter partes review proceeding be terminated pursuant to a settlement. Upon authorization by the Board on December 23, 2021, the Parties filed a Joint Motion to Terminate the captioned proceeding. IPR2021-01322, Paper 6 (“Joint Motion”). The Parties also filed a copy of the Settlement Agreements (IPR2021-01322, Ex. 2002) and filed a Joint Request to Keep Separate (IPR2021-01322, Paper 7, “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 copy of the Settlement Agreement is a true copy, and there are no other collateral agreements between the parties made in connection with, or in contemplation of, the termination. Joint Motion 1-3. The Parties also represent that “the lawsuit between Patent Owner and Petitioner, involving the Patent-in-Suit [has] been dismissed.” Joint Motion 3. We have not instituted trial and have not decided the merits of the proceeding. Furthermore, a final written decision has not been entered. IPR2021-01322 Patent 9,024,790 B2 3 Under these circumstances, we determine that good cause exists to terminate the 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 the Patent-in-Suit. 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 IPR2021-01322 is hereby terminated; and FURTHER ORDERED that the Joint Request is granted, and the Settlement Agreements shall be kept separate from the file of Patent 9,024,790, 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). IPR2021-01322 Patent 9,024,790 B2 4 For PETITIONER: David M. Hoffman (Lead Counsel) IPR13276-0075IP1@fr.com For PATENT OWNER: Reza Mirzaeie (Lead Counsel) Kristopher Davis rmirzaie@raklaw.com rak_neodron@raklaw.com kdavis@raklaw.com