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`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.
`______________
`
`Case No. IPR2019-01365
`U.S. Patent No. 7,039,435
`______________
`
`
`MOTION TO TERMINATE PETITIONER ZTE (USA) INC.
`
`
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`1 Samsung Electronics Co., Ltd., who filed a petition in IPR2020-00697, has been
`joined as a petitioner in this proceeding.
`
`
`
`Case IPR2019-01365
`Patent 7,039,435
`I.
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Under 35 U.S.C. § 317(a), Petitioner ZTE (USA) Inc. (“ZTE”) and Patent
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`Owner Bell Northern Research, LLC (“BNR”) jointly request that the Board
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`terminate Petitioner ZTE (USA) Inc. from this proceeding. ZTE and BNR have
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`reached a settlement that resolves their dispute concerning the patent at issue in
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`this proceeding. Petitioner Samsung Electronics Co., Ltd. (“Samsung”) is not a
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`party to the settlement and will remain a petitioner in this proceeding.
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`II. STATEMENT OF MATERIAL FACTS
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`
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`1.
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`U.S. Patent No. 7,039,435 (the “’435 patent”) is the subject of this
`
`proceeding and is one of eight patents originally asserted against ZTE in Civil
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`Action 3:18-cv-01786-CAB-BLM before the United States District Court for the
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`Southern District of California.
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`
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`2. On February 11, 2020, the Board instituted an inter partes review on
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`claims 1–3 and 6 of the ’435 patent. (Paper 13 at 39.)
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`3. On July 27, 2020, ZTE and BNR reached a settlement that resolves
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`their dispute with respect to several patents, including the ’435 patent. Samsung is
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`not a party to the settlement agreement. Pursuant to the settlement agreement, the
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`parties have agreed to seek termination of ZTE from this proceeding.
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`4. On July 30, 2020, counsel for ZTE and BNR requested authorization
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`from the Board to file a motion to terminate ZTE from this proceeding, and to treat
`
`-1-
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`
`
`Case IPR2019-01365
`Patent 7,039,435
`the parties’ settlement agreement as business confidential. On August 25, 2020, the
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`Board authorized the parties to file a motion to terminate these proceedings as to
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`ZTE, along with the executed written agreement and a request to treat the
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`agreement as business confidential.
`
`5.
`
`In accordance with 37 C.F.R. § 42.74(b), ZTE and BNR submit a true
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`and correct copy (non-redacted) of the settlement agreement as Exhibit 1029 with
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`the designation “Board Only.”2
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`6.
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`There are no other collateral agreements or understandings made
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`between ZTE and BNR in connection with, or in contemplation of, the termination
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`of this inter partes review.
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`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`Termination of Petitioner ZTE from this proceeding is proper as the Board
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`has not yet decided the merits of this proceeding. As required under 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(b), ZTE and BNR have provided a true and correct
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`(non-redacted) copy of their settlement agreement (Exhibit 1029), and there is no
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`2 Together with this motion, the parties file a joint motion requesting that the Board
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`treat Exhibit 1029 as business confidential information, keep it separate from the
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`files of the involved patent, and make it available only to the entities and under the
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`conditions identified in 37 C.F.R. § 42.74(c).
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`
`
`Case IPR2019-01365
`Patent 7,039,435
`other agreement, oral or written, between ZTE and BNR made in connection with,
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`or in contemplation of, the termination of ZTE from this proceeding. This
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`agreement settles all litigation, including this proceeding, between ZTE and BNR
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`with respect to the ’435 patent. Accordingly, the Board should terminate Petitioner
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`ZTE from this proceeding.
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`Dated: August 26, 2020
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`
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`Respectfully submitted,
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`/Amol A. Parikh/
`Amol A. Parikh, Reg. No. 60,671
`Charles McMahon, Reg. No. 44,926
`Thomas DaMario, Reg. No. 77,142
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street, Suite 4000
`Chicago, IL 60606
`Phone: 312-984-6477
`Fax: 312-984-7700
`amparikh@mwe.com
`cmcmahon@mwe.com
`tdamario@mwe.com
`jrbaker@mwe.com
`
`Jiaxiao Zhang, Reg. No. 63,235
`MCDERMOTT WILL & EMERY LLP
`18565 Jamboree Road, Suite 250
`Irvine, California 92612
`Phone: 949-757-6398
`Fax: 949-851-9348
`jiazhang@mwe.com
`
`Counsel for Petitioner ZTE (USA) Inc.
`
`
`
`Case IPR2019-01365
`Patent 7,039,435
`
`
`
`
`
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`Respectfully submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell
`Alexander E. Gasser
`Paul J. Skiermont
`Sadaf R. Abdullah
`SKIERMONT DERBY LLP
`1601 Elm Street, Suite 4400
`Dallas, Texas 75201
`Tel: (214) 978-6600
`BNR_SDTeam@skiermontderby.com
`
`Mieke K. Malmberg
`SKIERMONT DERBY LLP
`800 Wilshire Boulevard, Suite 1450
`Los Angeles, CA 90017
`Tel: (213) 788-4500
`BNR_SDTeam@skiermontderby.com
`
`Attorneys for Patent Owner
`
`
`
`
`Case IPR2019-01365
`Patent 7,039,435
`
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing MOTION
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`TO TERMINATE PETITIONER ZTE (USA) INC. was served in its entirety this
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`26th day of August 2020 by electronic mail:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Paul J. Skiermont
`Sadaf R. Abdullah
`SKIERMONT DERBY LLP
`1601 Elm Street, Suite 4400
`Dallas, Texas 75201
`Tel: (214) 978-6600
`BNR_SDTeam@skiermontderby.com
`
`Mieke K. Malmberg
`SKIERMONT DERBY LLP
`800 Wilshire Boulevard, Suite 1450
`Los Angeles, CA 90017
`Tel: (213) 788-4500
`BNR_SDTeam@skiermontderby.com
`
`Attorneys for Patent Owner
`
`Naveen Modi
`Joseph E. Palys
`Quadeer A. Ahmed
`Arvind Jairam
`PAUL HASTINGS LLP
`875 15th Street NW
`Washington, DC 20005
`Tel: (202) 551-1700
`Fax: (202) 551-1705
`PH-Samsung-BNR-IPR@paulhastings.com
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`Attorneys for Petitioner Samsung
`Electronics Co., Ltd.
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`
`
`Case IPR2019-01365
`Patent 7,039,435
`
`
`/Amol A. Parikh/
`Amol A. Parikh
`MCDERMOTT WILL & EMERY LLP
`
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