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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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`LG ELECTRONICS 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. IPR2020-00319
`U.S. Patent No. 7,039,435
`___________________
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`
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` PETITIONER LG ELECTRONICS INC.
`AND PATENT OWNER’S 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, Petitioner LG
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`Electronics Inc. (“Petitioner”) 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. IPR2020-00319.
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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 July 16,
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`2020.
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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 Circuit
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`places a particularly strong emphasis on settlement. See Cheyenne River
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`Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the
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`1
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`law favors settlement to reduce antagonism and hostility between parties).
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`Here, no public interest or other factors weigh against termination of this
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`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 of
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`this inter partes review. Petitioner filed its petition for IPR on December 19,
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`2019. No Motions are outstanding in this proceeding. No other party’s rights
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`will be prejudiced by the termination of this IPR.
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` The parties in the related district court action, Bell Northern Research, LLC
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`v. LG Electronics Inc., et al., Case No. 3:18-cv-02864-CAB-BLM, pending
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`in the United States District Court for the Southern District of California,
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`moved to dismiss the claims in that case that relate to the ’435 patent, which
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`the Court granted on July 14, 2020.
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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 2021.
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`2
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`/Timothy W. Riffe/
`Timothy W. Riffe
`Counsel for Petitioner
`Reg. No. 43,881
`FISH & RICHARDSON P.C.
`1000 Maine Ave., S.W.
`Washington, D.C. 20024
`Phone: 202-626-6429
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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
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`I certify that I caused to be served on the counsel for Petitioner a true and
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`correct copy of the foregoing Joint Motion to Terminate Pursuant to 35 U.S.C. §
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`317, by electronic means on July 16, 2020 at the following address of record:
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`Timothy W. Riffe
`riffe@fr.com
`Christopher C. Hoff
`hoff@fr.com
`R. Andrew Schwentker
`schwentker@fr.com
`PTABInbound@fr.com
`IPR18768-0183IP1@fr.com
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`Dated: July 16, 2020
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`Respectfully Submitted,
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`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`Counsel for Patent Owner
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`3
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