`571.272.7822
`
`
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` Paper 39
`
` Entered: October 28, 2020
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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.
`____________
`
`IPR2019-01365
`Patent 7,039,435 B2
`____________
`
`
`
`Before BRYAN F. MOORE, STACY B. MARGOLIES,
`and SCOTT E. BAIN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317, 37 C.F.R. § 42.74
`
`Pursuant to our authorization, on August 25, 2020, in this proceeding,
`
`Petitioner ZTE (USA), Inc. (“ZTE”) and Patent Owner filed a “Motion to
`
`
`1 Samsung Electronics Co., Ltd., who filed petitions in IPR2020-00697, has
`been joined as a petitioner to this proceeding.
`
`
`
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`
`IPR2019-01365
`Patent 7,039,435 B2
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`Terminate Petitioner ZTE (USA) Inc.” Paper 29 (“ZTE Mot.”). Along with
`the motion, ZTE and Patent Owner filed a settlement agreement (Exhibit
`1029) and a Request to Keep Separate (Paper 30), 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).
`ZTE and Patent Owner state that they have settled their dispute
`regarding the challenged patent, the settlement agreement has been made in
`writing, and a true and correct copy of the agreement is filed as Exhibit
`1029. ZTE Mot. 1–2. ZTE and Patent Owner assert that there are no other
`agreements, oral or written, between ZTE and Patent Owner made in
`connection with, or in contemplation of, the termination of ZTE from this
`proceeding. Id. at 2. ZTE and Patent Owner also state that the settlement
`agreement settles the dispute between ZTE and Patent Owner with respect to
`the challenged patent. Id. at 1. ZTE and Patent Owner further state that
`Petitioner Samsung Electronics Co., Ltd. Technologies, Inc. (“Samsung”) is
`not a party to the settlement. Id. at 1.
`Subsequently, pursuant to our authorization, on October 19, 2020,
`Petitioner Samsung Electronics Co., Ltd. (“Samsung”) and Patent Owner
`filed a “Petitioner Samsung Electronics Co., Ltd. and Patent Owner’s Joint
`Motion to Terminate Pursuant to 35 U.S.C. § 317” Paper 36 (“Samsung
`Mot.). Along with the motion, the Samsung and Patent Owner filed a
`settlement agreement (Exhibit 1033) and a Request to Keep Separate (Paper
`37), 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).
`
`2
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`IPR2019-01365
`Patent 7,039,435 B2
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`Samsung and Patent Owner state that they have settled their dispute
`regarding the challenged patent, the settlement agreement has been made in
`writing, and a true and correct copy of the agreement is filed as Exhibit
`1033. Samsung Mot. 2. Samsung and Patent Owner also state that the
`settlement agreement is a settlement between Samsung and Patent Owner
`with respect to the challenged patent. Id. at 1. Samsung and Patent Owner
`further state that “[i]n light of this joint request and petitioner ZTE’s pending
`motion to terminate (Paper 29), termination of this proceeding is proper.”
`Id. at 1.
`We instituted trial on February 11, 2020. Paper 13. We have not yet
`decided the merits in this proceeding. Under the circumstances, we
`determine it is appropriate to terminate this proceeding. We further
`determine it is appropriate to treat the settlement agreements as business
`confidential information, and therefore, grant the Joint Requests to Keep
`Exhibits 1029 and 1033, respectively, Separate and Confidential. See 35
`U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
`Samsung was joined to these proceedings pursuant to its Motion for
`Joinder in IPR2020-00697. See Paper 25. Accordingly, we further
`determine it is appropriate to terminate IPR2020-00697.
`
`It is
`
`ORDERED that the Motion to Terminate this proceeding with
`respect to ZTE is GRANTED;
`
`FURTHER ORDERED that the Motion to Terminate this
`proceedings is GRANTED and the proceeding is hereby terminated;
`
`FURTHER ORDERED that the Joint Requests that the settlement
`agreements (Exhibits 1069, 1033) be treated as business confidential
`
`3
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`IPR2019-01365
`Patent 7,039,435 B2
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`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are
`GRANTED; and
`
`FURTHER ORDERED that IPR2020-00697 is hereby terminated.
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`4
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`IPR2019-01365
`Patent 7,039,435 B2
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`FOR PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Quadeer A. Ahmed
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`quadeerahmed@paulhastings.com
`arvindjairam@paulhastings.com
`
`
`FOR PATENT OWNER:
`
`Steven W. Hartsell
`Alexander E. Gasser
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`
`
`
`5
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`
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