`571-272-7822
`
`
`
`
`
`Paper 8
`Date: January 28, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`Before BRYAN F. MOORE, SHARON FENICK and JASON M. REPKO,
`Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
`____________
`
`IPR2021-01590
`Patent 8,416,862 B2
`____________
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`IPR2021-01590
`Patent 8,416,862 B2
`
`
`INTRODUCTION
`With our emailed authorization, the parties filed a “Joint Motion to
`
`Dismiss Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.7[4].”
`Paper 7 (“Joint Motion to Terminate”). With our emailed authorization, the
`parties also filed a “Joint Motion to Keep [Settlement Agreement (Exhibit
`2001)] Confidential and Separate under 35 U.S.C. § 317(B) and 37 C.F.R.
`§ 42.74(C).” Paper 6 (“Joint Motion to Keep Separate”).
`The Joint Motion to Terminate explains that the parties “have entered
`into a written confidential settlement agreement that fully resolves this
`matter.” Paper 7, 1. The Joint Motion to Terminate further states that “[t]he
`parties agree that neither Patent Owner nor Petitioner will be prejudiced by
`termination of this proceeding.” Id. The parties have filed a copy of their
`settlement agreement as Exhibit 2001. Id. In that regard, the Joint Motion
`to Terminate states: “The undersigned represents that Exhibit 2001
`represents a true and accurate copy of the agreement between the parties
`(“Confidential Settlement Agreement”) that resolves the present
`proceeding.”1 Id.
`
`DISCUSSION
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement, unless the Board has already decided the
`merits of the proceeding. Consolidated Trial Practice Guide, 86 (November
`2019).2 This proceeding is at an early stage. Patent Owner has not yet filed
`a Preliminary Response and we have not issued a decision on whether to
`
`
`1 Hereinafter, Exhibit 2001 is referred to as “Settlement Agreement.”
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2021-01590
`Patent 8,416,862 B2
`
`institute an inter partes review. Under these circumstances, we grant the
`Joint Motion to Terminate (Paper 7) as to both Petitioner and Patent Owner.
`We also grant the Joint Motion to Keep Separate (Paper 6), which is
`to treat the parties’ Settlement Agreement (Exhibit 2001) as business
`confidential information and have it kept apart from the file of Patent
`8,416,862 B2 pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`ORDER
`
`It is
`ORDERED that the Joint Motion to Dismiss (Paper 7) is granted both
`as to Petitioner and to Patent Owner;
`FURTHER ORDERED that the Joint Motion to Keep Separate is
`granted, under the terms of 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that the Settlement Agreement (Ex. 2001)
`shall be treated as business confidential information, shall be kept separate
`from the file of Patent 8,416,862 B2, and shall be made available only in
`accordance with the provisions of 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that this proceeding is terminated both as to
`Petitioner and to Patent Owner, and the Petition is dismissed.
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2021-01590
`Patent 8,416,862 B2
`
`For PETITIONER:
`
`Walter Renner
`Timothy Riffe
`Christopher Hoff
`Jeremy Monaldo
`Jennifer Huang
`Dan Smith
`Kim Leung
`Usman Khan
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`riffe@fr.com
`hoff@fr.com
`jjm@fr.com
`jjh@fr.com
`dsmith@fr.com
`leung@fr.com
`khan@fr.com
`
`For PATENT OWNER:
`
`Daniel Young
`Chad King
`ADSERO IP LLC
`dyoung@adseroip.com
`chad@adseroip.com
`
`
`
`4
`
`
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