`Entered: December 13, 2019
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI TECHNOLOGIES CO., LTD.,
`Petitioner,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`___________
`
`Case IPR2019-01186
`Patent 7,039,435 B2
`___________
`
`Before BRYAN F. MOORE, STACY B. MARGOLIES, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
` 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`IPR2019-01186
`Patent 7,039,435 B2
`
`
`
`
`
`
`On December 6, 2019 the parties filed a Joint Motion to Terminate (Paper
`13, “Joint Motion”), a settlement agreement (Exhibit 2034, “Agreement”), and a
`Joint Request to Keep [the Agreement] Separate Pursuant to 35 U.S.C. § 317 and
`37 C.F.R. § 42.74 (Paper 14, “Joint Request”).
`In the Joint Motion, the parties state that they have settled their dispute
`regarding the challenged patent, pursuant to the Agreement. Joint Motion 1. The
`parties further state that the district court has dismissed the claims relating to the
`challenged patent in the case between the parties, Bell Northern Research, LLC v.
`Huawei Device Co., Ltd., et al., Case No. 3:18-cv-1784-CAB-BLM (Doc. No.
`128). Joint Motion 2–3. The parties also assert that there are no “public interest or
`other factors [that] weigh against termination of this proceeding.” Id. at 2.
`This case is in its preliminary stages and we have not yet decided whether to
`institute an inter partes review. Accordingly, we have not “decided the merits of
`the proceeding” prior to the parties’ request for termination. 35 U.S.C. § 317(a).
`The foregoing factors weigh in favor of granting the Joint Motion. We discern no
`factors weighing against termination of the proceeding. Accordingly, we grant the
`Joint Motion.
`Similarly, we determine that, under the circumstances, it is appropriate to
`treat the Agreement as business confidential information kept separate from the file
`of the challenged patent. We, therefore, also grant the Joint Request.
`
`
`ORDER
`
`For the foregoing reasons, it is
`ORDERED that the Joint Motion to Terminate is GRANTED, and the
`proceeding is hereby terminated; and
`
`
`2
`
`
`
`
`
`
`IPR2019-01186
`
`Patent 7,039,435 B2
`FURTHER ORDERED that the parties’ Joint Request to Keep Separate is
`GRANTED, and the Agreement shall be treated as business confidential
`information and kept separate from the file of the ’435 patent.
`
`
`
`For PETITIONER:
`
`Michael T. Hawkins
`Craig Deutsch
`Sangki Park
`Christopher Hoff
`Jason W. Wolff
`Kim Leung
`Jennifer Huang
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`deutsch@fr.com
`spark@fr.com
`hoff@fr.com
`wolff@fr.com
`leung@fr.com
`jjh@fr.com
`
`For PATENT OWNER:
`
`Steven W. Hartsell
`Alexander E. Gasser
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`
`
`3
`
`
`
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