`Date: July 30, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`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 IPR2020-00698
`Patent 7,039,435 B2
`___________
`
`Before BRYAN F. MOORE, STACY B. MARGOLIES, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
` 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`IPR2020-00698
`Patent 7,039,435 B2
`
`
`
`
`
`
`On June 8, 2020, the parties filed a Joint Motion to Terminate (Paper 7,
`“Joint Motion”), settlement agreement (Exhibit 1030, “Agreement”), and a Joint
`Request to Keep [the Agreement] Separate Pursuant to 35 U.S.C. § 317 and
`37 C.F.R. § 42.74 (Paper 8, “Joint Request”).
`In the Joint Motion, the parties state that they have settled their dispute
`regarding the only claim from the challenged patent addressed in the Petition filed
`in this proceeding, pursuant to the Agreement. Joint Motion 1. The parties also
`state that no “public interest or other factors weigh against termination of this
`proceeding.” Id. at 2.
`This case is in its preliminary stages and we have not yet decided whether to
`institute an inter partes review in this matter. Accordingly, we have not “decided
`the merits of the proceeding” prior to the parties’ request for termination. See
`35 U.S.C. § 317(a). The foregoing factors weigh in favor of granting the Joint
`Motion. We discern no factors weighing against termination of the proceeding, on
`this record. Accordingly, we grant the Joint Motion.
`Similarly, we determine that, under the circumstances, it is appropriate to
`treat the Agreement as business confidential information kept separate from the file
`of the challenged patent. We, therefore, also grant the Joint Request.
`
`
`ORDER
`
`For the foregoing reasons, it is
`ORDERED that the Joint Motion to Terminate is GRANTED, and the
`proceeding is hereby terminated; and
`FURTHER ORDERED that the parties’ Joint Request to Keep Separate is
`GRANTED, and the Agreement (Ex. 1030) shall be treated as business
`confidential information and kept separate from the file of the ’435 patent.
`2
`
`
`
`
`
`
`
`
`IPR2020-00698
`Patent 7,039,435 B2
`
`
`For PETITIONER:
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Joseph Palys
`josephpalys@paulhastings.com
`
`Quadeer Ahmed
`quadeerahmed@paulhastings.com
`
`Arvind Jairam
`arvindjairam@paulhastings.com
`
`
`
`For PATENT OWNER:
`
`Steven Hartsell
`shartsell@skiermontderby.com
`
`Alexander Gasser
`agasser@skiermontderby.com
`
`Joseph Ramirez
`jramirez@skiermontderby.com
`
`3
`
`
`
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