`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`_______________
`Patent No. 8,416,862 B2
`Inter Partes Review No. IPR2021-01590
`_____________________________________________________________
`
`JOINT MOTION TO DISMISS PURSUANT TO 35 U.S.C. § 317 AND
`37 C.F.R. §§ 42.72 AND 42.7
`
`
`
`
`
`IPR2021-01590
`
`Pursuant to 37 C.F.R. 42.71(a), Petitioner and Patent Owner jointly request
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`dismissal of the petition for inter partes review of U.S. Patent No. 8,416,862 B2 (the
`
`"'862 Patent") in IPR2021-01590. On January 13, 2022, the parties informed the
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`Board of a settlement agreement between Petitioner and Patent Owner via e-mail
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`and requested authorization to file a joint motion to dismiss the petition with respect
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`to both the Patent Owner and Petitioner in accordance with 37 C.F.R. § 42.20(b).
`
`As set forth in an email dated January 18, 2022, the Board authorized the filing of
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`the requested joint motion to dismiss this petition. Accordingly, Petitioner and
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`Patent Owner jointly request dismissal of the present proceeding, which is proper
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`for at least the following reasons.
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`Petitioner and Patent Owner have entered into a written confidential
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`settlement agreement that fully resolves this matter. The parties are concurrently
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`filing a copy of the settlement agreement as Exhibit 2001 along with a request to
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`treat it as confidential business information pursuant to 35 U.S.C. § 317(b). The
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`undersigned represents that Exhibit 2001 represents a true and accurate copy of the
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`agreement between the parties (“Confidential Settlement Agreement”) that resolves
`
`the present proceeding. The parties agree that neither Patent Owner nor Petitioner
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`will be prejudiced by termination of this proceeding.
`
`The parties “may terminate the proceeding . . . unless the Board has already
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`decided the merits of the proceeding.” Consolidated Office Patent Trial Practice
`
`1
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`
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`IPR2021-01590
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`Guide, 4 (November 2019). This proceeding is still in its preliminary phase and the
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`Board has yet to issue a decision on institution. The parties have now settled their
`
`dispute and have reached agreement to terminate the petition. The USPTO can
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`conserve its resources by terminating now, removing the need for the Board to
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`further consider the arguments, to issue an Institution Decision, and to render a Final
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`Decision.
`
`Termination is appropriate because public policy favors terminating the
`
`present petition for inter partes review. Congress and federal courts favor settlement
`
`of litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352 (1981)
`
`(“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of litigation.”);
`
`Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir.) (“The law favors
`
`settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit
`
`similarly favors settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046,
`
`1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce antagonism
`
`and hostility between parties). And, the Board’s Trial Practice Guide states that
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`“[t]here are strong public policy reasons to favor settlement between the parties to a
`
`proceeding.” Office Patent Trial Practice Guide, 86 (November 14, 2019).
`
`The parties have settled the pending district court litigation regarding the '862
`
`Patent, Bell Northern Research, LLC v. Apple Inc., Case No. 6:21-cv-00833 (W.D.
`
`Tex.). Termination of this proceeding would avoid further unnecessary legal costs.
`
`2
`
`
`
`IPR2021-01590
`
`With respect to other pending litigation or proceedings involving the '862 Patent,
`
`Patent Owner identifies the following related matters:
`
`U.S. District Court Cases
`
` Bell Northern Research, LLC v. TCL Technology Group Corporation
`
`et al., Case No. 2:21-cv-07323 (C.D. Cal.)
`o Complaint filed September 13, 2021, Defendants have yet to
`
`respond to Complaint
`
` Bell Northern Research, LLC v. Lenovo Group Ltd. et al., Case
`
`No. 6:21-cv-00847 (W.D. Tex.)
`o Complaint filed August 13, 2021, parties have settled their
`
`dispute and are in the process of seeking dismissal
`
` Bell Northern Research, LLC v. Oneplus Technology (Shenzhen) Co.
`
`Ltd. et al., Case No. 3:21-cv-02293 (N.D. Tex.)
`o Complaint filed September 27, 2021, parties have settled their
`
`dispute and are in the process of seeking dismissal
`
`PTAB Proceedings
`
` Oneplus Technology (Shenzhen) Co. Ltd. v. Bell Northern Research,
`
`LLC, Case No. IPR2022-00048 (PTAB)
`o Petition filed October 19, 2021, parties have settled their dispute
`
`and are in the process of seeking dismissal
`
`3
`
`
`
`IPR2021-01590
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`ITC Investigations
`
` In the Matter of Certain Electronic Devices Having Wireless
`
`Communication Capabilities and Components Thereof, Inv. No. 337-
`
`TA-1284 (ITC)
`o Complaint
`
`filed on September 24, 2021, with
`
`Initial
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`Determination issued on November 17, 2021, with all parties
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`other than TCL Electronics Holdings Limited, BLU Products,
`
`Inc., and HMD Global Oy (and related entities) having settled
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`their disputes and in the process of seeking dismissal
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`Other than the above pending matters, Patent Owner states that there is no other
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`pending litigation or proceeding involving the '862 Patent. Patent Owner further
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`states that there is no other litigation or proceeding involving the '862 Patent
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`contemplated in the foreseeable future.
`
`For the reasons set forth above, the parties respectfully request dismissal of
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`the petition for inter partes review of U.S. Patent No. 8,416,862 B2 (IPR2021-
`
`01590).
`
`4
`
`
`
`Dated: January 26, 2022
`
`
`
`
`
`
`
`
`IPR2021-01590
`
`
`
`
`
`/s/Daniel S. Young/
`Daniel S. Young, Reg. No. 48,277
`Chad E. King, Reg. No. 44,187
`ADSERO IP LLC
`8210 Southpark Terrace
`Littleton, CO 80120
`(303) 268-0066 (telephone)
`(833) 793-0703 (facsimile)
`
`Counsel for Patent Owner
`Bell Northern Research, LLC
`
` By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/W. Karl Renner/
` By:
` W. Karl Renner, Reg. No. 41,265
`
`Timothy W. Riffe, Reg. No. 43,881
`
`Jeremy J. Monaldo, Reg. No. 58,680
`
`Jennifer Huang, Reg. No. 64,297
`
`Daniel D. Smith, Reg. No. 71,278
`
`Kim Leung, Reg. No. 64,399
`
`Christopher Hoff, Reg. No. 67,738
`
`Usman A. Khan, Reg. No. 70,439
`
`Fish & Richardson P.C.
`
`3200 RBC Plaza, 60 South Sixth St.
` Minneapolis, MN 55402
`
`T: 612-335-5070
`
`F: 612-288-9696
`
`
`
`
`Counsel for Petitioner
`Apple Inc.
`
`
`
`
`
`
`
`5
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`
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`IPR2021-01590
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6, the undersigned hereby certifies that a copy of
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`the foregoing JOINT MOTION TO DISMISS PURSUANT TO 35 U.S.C. § 317
`
`AND 37 C.F.R. §§ 42.72 AND 42.74 was filed through the Patent Trial and Appeal
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`Board End to End (PTAB E2E) electronic filing system on January 26, 2022, with
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`confirmation copy served via electronic mail, on the following counsel of record for
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`Petitioner:
`
`W. Karl Renner
`FISH & RICHARDSON P.C.
`Email: IPR50095-0050IP1@fr.com
`Reference No. IPR50095-0050IP1
`Timothy W. Riffe
`Jeremy J. Monaldo
`Jennifer Huang
`Daniel D. Smith
`Kim Leung
`Christopher Hoff
`Usman A. Khan
`FISH & RICHARDSON P.C.
`Email: PTABInbound@fr.com
`axf-ptab@fr.com
`riffe@fr.com
`hoff@fr.com
`
`
` By:
`
`
`
`Dated: January 26, 2022
`
`6
`
`/s/Daniel S. Young/
`Daniel S. Young
`Registration No. 48,277
`
`
`
`
`
`
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