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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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`SAMSUNG ELECTRONICS CO., LTD.,
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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. IPR2020-00698
`U.S. Patent No. 7,039,435
`___________________
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` PETITIONER SAMSUNG ELECTRONICS CO., LTD.
`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, 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. IPR2020-00698.1 The parties note that the Patent
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`Owner’s Preliminary Response is due on June 17, 2020.
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`The parties have settled with respect to the only claim addressed from the
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`challenged patent by Case No. IPR2020-00698, and have reached agreement to
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`terminate this IPR. In accordance with 37 C.F.R. § 42.20(b), the parties received
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`authorization from the Board to file this motion on June 8, 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.”) (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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`1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950
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`1 Only claim 8 of the ’435 patent is challenged in Case No. IPR2020-00698.
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`1
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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.”). Indeed, the Board has not yet made a
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`decision on institution of this inter partes review. Petitioner filed its petition
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`for inter partes review on March 10, 2020. No Motions are outstanding in
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`this proceeding. No other party’s rights will be prejudiced by the termination
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`of this inter partes review. This supports the propriety of terminating this
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`proceeding even though the settlement and termination provisions of 35
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`U.S.C. § 317, on their face, apply only to “instituted” proceedings. 77 Fed.
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`Reg. 48680, 48686 (Aug. 14, 2012) (And 35 U.S.C. 317(a) provides “An
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`inter partes review instituted under this chapter shall be terminated with
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`respect to any petitioner upon the joint request of the petitioner and the
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`2
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`patent owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.”)
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`• The parties in the related district court action, Bell Northern Research, LLC
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`v. Samsung Electronics Co., Ltd., et al., Case No. 2:19-cv-00286-JRG
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`pending in the Eastern District of Texas have reached an agreement to end
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`any dispute as to claim 8 of the ’435 Patent.
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`Petitioner and Patent Owner are aware that IPR2020-00697, IPR2020-00319,
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`and IPR2019-01365, each related to the ’435 patent, remain pending.
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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 1030.
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`Dated: June 8, 2020
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`/Naveen Modi/
`Naveen Modi
`Counsel for Petitioner
`Reg. No. 46,224
`PAUL HASTINGS LLP
`875 15th Street NW
`Washington, DC 20005
`Phone: 202-551-1700
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`Respectfully submitted,
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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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`3
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 8, 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:
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`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
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`Dated: June 8, 2020
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`Respectfully submitted,
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`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
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