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`Filed: December 6, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`HUAWEI TECHNOLOGIES CO., LTD.
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`PETITIONER,
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`V.
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`BELL NORTHERN RESEARCH, LLC,
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`PATENT OWNER.
`___________________
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`Case No. IPR2019-01186
`U.S. Patent No. 7,039,435
`___________________
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`
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Huawei Technologies
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`Co., Ltd. (“Petitioner”) and Patent Owner Bell Northern Research, LLC (“Patent
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`Owner”) jointly request termination of this inter partes review (IPR) of U.S. Patent
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`No. 7,039,435 (“’435 patent”), Case No. IPR2019-01186.
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`The parties have settled with respect to the challenged patent and have
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`reached agreement to terminate this IPR. In accordance with 37 C.F.R. § 42.20(b),
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`the parties received authorization from the Board to file this motion on December
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`5, 2019.
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`Termination of this proceeding is proper for at least the following reasons:
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`• The parties are jointly requesting termination. 77 Fed. Reg. 48756, 48768
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`(Aug. 14, 2012) (“There are strong public policy reasons to favor settlement
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`between the parties to a proceeding.”) (emphasis added). Both Congress and
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`the federal courts have expressed a strong interest in encouraging settlement
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`in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
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`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement
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`of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir.
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`1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950
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`(1986). The Federal Circuit places a particularly strong emphasis on
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`settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050
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`(Fed. Cir. 1986) (noting that the law favors settlement to reduce antagonism
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`1
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`and hostility between parties). Here, no public interest or other factors
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`weigh against termination of this proceeding.
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`• The Board has not yet “decided the merits of the proceeding before the
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`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added); 77
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`Fed. Reg. 48768 (“The Board expects that a proceeding will terminate after
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`the filing of a settlement agreement, unless the Board has already decided
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`the merits of the proceeding.”). Indeed, the Board has not yet made a
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`decision on institution of this inter partes review. Petitioner filed its petition
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`for inter partes review on June 12, 2019. No Motions are outstanding in this
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`proceeding. No other party’s rights will be prejudiced by the termination of
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`this inter partes review. This supports the propriety of terminating this
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`proceeding even though the settlement and termination provisions of 35
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`U.S.C. § 317, on their face, apply only to “instituted” proceedings. 77 Fed.
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`Reg. 48680, 48686 (Aug. 14, 2012) (And 35 U.S.C. 317(a) provides “An
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`inter partes review instituted under this chapter shall be terminated with
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`respect to any petitioner upon the joint request of the petitioner and the
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`patent owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.”).
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`• The District court in the action of Bell Northern Research, LLC v. Huawei
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`Device Co., Ltd., et al., Case No. 3:18-cv-1784-CAB-BLM (Doc. No. 128)
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`2
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`pending in the Southern District of California has dismissed the claims that
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`relate to the ’435 patent.
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`The following proceedings are related to the ’435 patent:
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`IPR2019-01365
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`The settlement agreement between the parties has been made in writing, and
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`a true and correct copy will be filed with this request as Exhibit 2034.
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`
` /Michael T. Hawkins/
`Michael T. Hawkins
`Counsel for Petitioner
`Reg. No. 57,867
`FISH & RICHARDSON P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`Phone: 612-337-2569
`Fax 612-288-9696
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`
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`/Steven W. Hartsell/
`Steven W. Hartsell
`Counsel for Patent Owner
`Reg. No. 58,788
`SKIERMONT DERBY LLP
`1601 Elm Street, Suite 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
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`3
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Joint Motion
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`to Terminate was served on December 6, 2019, by delivering a copy via electronic
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`mail to the attorneys of record for the Petitioners as follows:
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`Michael T. Hawkins
`Craig Deutsch
`Sangki Park
`Christopher Hoff
`Jason W. Wolff
`Kim Leung
`Jennifer Huang
`IPR35548-0101IP1@fr.com
`hawkins@fr.com
`PTABInbound@fr.com
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`Dated: December 6, 2019
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`Respectfully submitted,
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`/Steven W. Hartsell/
`Counsel for Patent Owner
`Reg. No. 58,788
`SKIERMONT DERBY LLP
`1601 Elm Street, Suite 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
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`4
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