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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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`ZTE (USA) INC.
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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. IPR2019-01438
`U.S. Patent No. 8,416,862
`___________________
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, ZTE (USA) Inc.
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`(“Petitioner”) and Patent Owner Bell Northern Research, LLC (“Patent Owner”)
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`jointly request termination of this inter partes review (IPR) of U.S. Patent No.
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`8,416,862 (“’862 patent”), Case No. IPR2019-01438.
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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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`10, 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.”). Both Congress and the federal courts
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`have expressed a strong interest in encouraging settlement in litigation. See,
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`e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose
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`of [Fed. R. Civ. P.] 68 is to encourage the settlement of litigation.”); Bergh
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`v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors
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`settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal
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`Circuit places a particularly strong emphasis on settlement. See Cheyenne
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`River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that
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`the law favors settlement to reduce antagonism and hostility between
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`parties). Here, the parties are aware of 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); 77 Fed. Reg. 48768
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`(“The Board expects that a proceeding will terminate after the filing of a
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`settlement agreement, unless the Board has already decided the merits of the
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`proceeding.”). Indeed, the Board has not yet made a decision on institution
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`of this inter partes review. Petitioner filed its petition for inter partes
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`review on August 2, 2019. No motions are outstanding in this proceeding.
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`Neither party’s rights will be prejudiced by the termination of this inter
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`partes review. This supports the propriety of terminating this proceeding
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`even though the settlement and termination provisions of 35 U.S.C. § 317,
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`on their face, apply only to “instituted” proceedings. 77 Fed. Reg. 48680,
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`48686 (Aug. 14, 2012)
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` The district court in the action of Bell Northern Research, LLC v. ZTE Corp.
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`et al., Case No. 3:18-cv-1786-CAB-BLM (Doc. No. 138) pending in the
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`Southern District of California has dismissed the claims that relate to the
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`’862 patent.
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`The following proceedings are related to the ’862 patent:
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`IPR2019-01439
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`IPR2020-00108
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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 2001.
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`/Amol Parikh/
`Amol Parikh
`Counsel for Petitioner
`Reg. No. 60,671
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street
`Chicago, IL 60606-0029
`Phone: 312-984-6477
`Fax: 312-984-7700
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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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`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 12, 2019, by delivering a copy via
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`electronic mail to the attorneys of record for the Petitioners as follows:
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`Amol A. Parikh
`Charles M. McMahon
`Thomas M. DaMario
`Jiaxiao Zhang
`ZTEBNR-PTAB@mwe.com
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`Dated: December 12, 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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