Trials@uspto.gov Paper 39
571.272.7822 Entered: October 28, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
ZTE (USA), INC. AND
SAMSUNG ELECTRONICS CO., LTD.,1
Petitioners,
v.
BELL NORTHERN RESEARCH, LLC,
Patent Owner.
____________
IPR2019-01365
Patent 7,039,435 B2
____________
Before BRYAN F. MOORE, STACY B. MARGOLIES,
and SCOTT E. BAIN, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317, 37 C.F.R. § 42.74
Pursuant to our authorization, on August 25, 2020, in this proceeding,
Petitioner ZTE (USA), Inc. (“ZTE”) and Patent Owner filed a “Motion to
1 Samsung Electronics Co., Ltd., who filed petitions in IPR2020-00697, has
been joined as a petitioner to this proceeding.
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Patent 7,039,435 B2
2
Terminate Petitioner ZTE (USA) Inc.” Paper 29 (“ZTE Mot.”). Along with
the motion, ZTE and Patent Owner filed a settlement agreement (Exhibit
1029) and a Request to Keep Separate (Paper 30), in which the parties
request the settlement agreement be treated as business confidential
information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
ZTE and Patent Owner state that they have settled their dispute
regarding the challenged patent, the settlement agreement has been made in
writing, and a true and correct copy of the agreement is filed as Exhibit
1029. ZTE Mot. 1–2. ZTE and Patent Owner assert that there are no other
agreements, oral or written, between ZTE and Patent Owner made in
connection with, or in contemplation of, the termination of ZTE from this
proceeding. Id. at 2. ZTE and Patent Owner also state that the settlement
agreement settles the dispute between ZTE and Patent Owner with respect to
the challenged patent. Id. at 1. ZTE and Patent Owner further state that
Petitioner Samsung Electronics Co., Ltd. Technologies, Inc. (“Samsung”) is
not a party to the settlement. Id. at 1.
Subsequently, pursuant to our authorization, on October 19, 2020,
Petitioner Samsung Electronics Co., Ltd. (“Samsung”) and Patent Owner
filed a “Petitioner Samsung Electronics Co., Ltd. and Patent Owner’s Joint
Motion to Terminate Pursuant to 35 U.S.C. § 317” Paper 36 (“Samsung
Mot.). Along with the motion, the Samsung and Patent Owner filed a
settlement agreement (Exhibit 1033) and a Request to Keep Separate (Paper
37), in which the parties request the settlement agreement be treated as
business confidential information pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c).
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Samsung and Patent Owner state that they have settled their dispute
regarding the challenged patent, the settlement agreement has been made in
writing, and a true and correct copy of the agreement is filed as Exhibit
1033. Samsung Mot. 2. Samsung and Patent Owner also state that the
settlement agreement is a settlement between Samsung and Patent Owner
with respect to the challenged patent. Id. at 1. Samsung and Patent Owner
further state that “[i]n light of this joint request and petitioner ZTE’s pending
motion to terminate (Paper 29), termination of this proceeding is proper.”
Id. at 1.
We instituted trial on February 11, 2020. Paper 13. We have not yet
decided the merits in this proceeding. Under the circumstances, we
determine it is appropriate to terminate this proceeding. We further
determine it is appropriate to treat the settlement agreements as business
confidential information, and therefore, grant the Joint Requests to Keep
Exhibits 1029 and 1033, respectively, Separate and Confidential. See 35
U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
Samsung was joined to these proceedings pursuant to its Motion for
Joinder in IPR2020-00697. See Paper 25. Accordingly, we further
determine it is appropriate to terminate IPR2020-00697.
It is
ORDERED that the Motion to Terminate this proceeding with
respect to ZTE is GRANTED;
FURTHER ORDERED that the Motion to Terminate this
proceedings is GRANTED and the proceeding is hereby terminated;
FURTHER ORDERED that the Joint Requests that the settlement
agreements (Exhibits 1069, 1033) be treated as business confidential
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information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are
GRANTED; and
FURTHER ORDERED that IPR2020-00697 is hereby terminated.
IPR2019-01365
Patent 7,039,435 B2
5
FOR PETITIONER:
Naveen Modi
Joseph E. Palys
Quadeer A. Ahmed
Arvind Jairam
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
quadeerahmed@paulhastings.com
arvindjairam@paulhastings.com
FOR PATENT OWNER:
Steven W. Hartsell
Alexander E. Gasser
SKIERMONT DERBY LLP
shartsell@skiermontderby.com
agasser@skiermontderby.com
