`
`
`
`
`Paper No. __
`Filed: October 19, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`SAMSUNG ELECTRONICS CO., LTD.,
`
`PETITIONER,
`V.
`BELL NORTHERN RESEARCH, LLC,
`PATENT OWNER.
`___________________
`
`Case No. IPR2019-01365
`U.S. Patent No. 7,039,435
`___________________
`
`
`PETITIONER SAMSUNG ELECTRONICS CO., LTD.
`AND PATENT OWNER’S JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Samsung Electronics
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`Co., Ltd. (“Petitioner” or “SEC” ) and Patent Owner Bell Northern Research, LLC
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`(“Patent Owner”) (collectively, the “parties”) jointly request termination of this
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`inter partes review (IPR) of U.S. Patent No. 7,039,435 (“’435 patent” or
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`“challenged patent”), Case No. IPR2019-01365. The parties note that the Patent
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`Owner’s Sur-Reply is due on October 20, 2020. (Paper No. 28 at 4.)
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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 via email to file this motion on
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`October 15, 2020.
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`In light of this joint request and petitioner ZTE’s pending motion to
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`terminate (Paper 29), termination of this proceeding is proper for at least the
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`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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`1
`
`
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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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`and hostility between parties). Here, no public interest or other factors weigh
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`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.”). No other party’s rights will be prejudiced by
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`the termination of this inter partes review. In fact, Patent Owner and
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`petitioner ZTE jointly moved to terminate ZTE from this proceeding, and
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`that motion is pending (Paper 29). This supports the propriety of terminating
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`this proceeding. 77 Fed. Reg. 48680, 48686 (Aug. 14, 2012).
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`• The related district court case, Bell Northern Research, LLC v. Samsung
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`Electronics Co., Ltd., et al., Case No. 2:19-cv-00286-JRG in the Eastern
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`District of Texas, has been dismissed with prejudice.
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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 motion as Exhibit 1033.
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`2
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`
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`Dated: October 19, 2020
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/Naveen Modi/
`Naveen Modi
`Counsel for Petitioner
`Reg. No. 46,224
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, DC 20036
`Phone: 202-551-1700
`
`
`
`
`
`
`
`
`
`/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
`
`3
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`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on October 19, 2020, a copy of the foregoing Petitioner
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`Samsung Electronics Co., Ltd. And Patent Owner’s Joint Motion To Terminate
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`Pursuant To 35 U.S.C. § 317 was served by electronic means upon the following:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Joseph M. Ramirez
`Paul J. Skiermont
`Sadaf R. Abdullah
`Mieke K. Malmberg
`Steven J. Udick
`BNR_SDTeam@skiermontderby.com
`
`
`Dated: October 19, 2020
`
`Respectfully submitted,
`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
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`
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`
`
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