Trials@uspto.gov Paper 11
571.272.7822 Entered: October 16, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
COOLPAD TECHNOLOGIES, INC. AND
SAMSUNG ELECTRONICS CO., LTD.,1, 2
Petitioners,
v.
BELL NORTHERN RESEARCH, LLC,
Patent Owner.
____________
IPR2019-01319 (Patent 8,204,554 B2)
IPR2019-01320 (Patent 7,319,889 B2)3
____________
Before MELISSA A. HAAPALA, STACY B. MARGOLIES,
and SCOTT E. BAIN, Administrative Patent Judges.
HAAPALA, Administrative Patent Judge.
ORDER
Granting Motion to Terminate Petitioner Samsung Electronics Co., Ltd.
35 U.S.C. § 317, 37 C.F.R. § 42.74
1 Samsung Electronics Co., Ltd., who filed petitions in IPR2020-00675 and
IPR2020-00676, has been joined as a petitioner to both of these proceedings.
2 ZTE (USA) Inc. was terminated from this proceeding on August 31, 2020.
IPR2019-01319, Paper 72; IPR2019-01320, Paper 71.
3 We exercise our discretion to issue one Order to be filed in each
proceeding. The parties, however, are not authorized to use this style
heading in any subsequent papers.
IPR2019-01319 (Patent 8,204,554 B2)
IPR2019-01320 (Patent 7,319,889 B2)
2
Pursuant to our authorization, on October 14, 2020, in each of these
proceedings, Petitioner Samsung Electronics Co., Ltd. (“Samsung”) and
Patent Owner filed a “Motion to Terminate Petitioner Samsung Electronics
Co., Ltd.” Paper 84 (“Mot.).4 Along with the motions, the parties filed a
settlement agreement (Exhibit 2062) and Requests to Keep Separate (Paper
82), 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).
Samsung and Patent Owner state that they have settled their dispute
regarding the challenged patent in each proceeding, the settlement
agreement has been made in writing, and a true and correct copy of the
agreement is filed as Exhibit 2062. Mot. 1–2. Samsung and Patent Owner
assert that there are no other agreements, oral or written, between Samsung
and Patent Owner made in connection with, or in contemplation of, the
termination of Samsung from these proceedings. Id. at 2. Samsung and
Patent Owner also assert state that the settlement agreement settles all
litigation between Samsung and Patent Owner with respect to the challenged
patents. Id. at 2. Samsung and Patent Owner further state that Petitioner
Coolpad Technologies, Inc. (“Coolpad”) is not a party to the settlement and
will remain a petitioner in these proceedings. Id. at 1.
We instituted trial on January 29, 2020 in each of these proceedings.
Paper 19. These proceedings are still in the preliminary stages and we have
not yet decided the merits. Under the circumstances, we determine it is
appropriate to terminate these proceeding as to Samsung. These proceedings
4 For purposes of expediency, we cite to the papers and exhibits entered in
IPR2019-01319. Similar papers and exhibits were entered in IPR2019-
01320.
IPR2019-01319 (Patent 8,204,554 B2)
IPR2019-01320 (Patent 7,319,889 B2)
3
are not terminated with respect to Coolpad. We further determine it is
appropriate to treat the settlement agreement as business confidential
information, and therefore, grant the Joint Requests to Keep Exhibit 2062
Separate and Confidential. See 35 U.S.C. § 317(b) (2018); 37 C.F.R.
§ 42.74(c).
Samsung was joined to these proceedings pursuant to its Motions for
Joinder in IPR2020-00675 and IPR2020-00676. See Paper 41. Accordingly,
we further determine it is appropriate to terminate IPR2020-00675 and
IPR2020-00676.
It is
ORDERED that the Motions to Terminate these proceedings with
respect to Samsung are GRANTED;
FURTHER ORDERED that the Joint Requests that the settlement
agreement (Exhibit 2062) be treated as business confidential information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are GRANTED;
FURTHER ORDERED that these proceedings will continue with
Coolpad as a named Petitioners; and
FURTHER ORDERED that IPR2020-00675 and IPR2020-00676 are
hereby terminated.
IPR2019-01319 (Patent 8,204,554 B2)
IPR2019-01320 (Patent 7,319,889 B2)
4
FOR PETITIONER:
Naveen Modi
Joseph Palys
Chetan Bansal
Arvind Jairam
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
chetanbansal@paulhastings.com
arvindjairam@paulhastings.com
FOR PATENT OWNER:
Steve Hartsell
Alexander Gasser
Joseph Ramirez
SHIERMONT DERBY LLP
shartsell@skiermontderby.com
agasser@skiermontderby.com
jramirez@skiermontderby.com
