UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`_________________
`
`ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD,
`
`Petitioner
`
`
`v.
`
`
`BELL NORTHERN RESEARCH, LLC,
`
`Patent Owner
`
`_________________
`
`Case IPR2022-00048
`
`U.S. Patent No. 8,416,862
`_________________
`
`
`UNOPPOSED MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`_________________
`
`ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD,
`
`Petitioner
`
`
`v.
`
`
`BELL NORTHERN RESEARCH, LLC,
`
`Patent Owner
`
`_________________
`
`Case IPR2022-00048
`
`U.S. Patent No. 8,416,862
`_________________
`
`
`UNOPPOSED MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2022-00048
`U.S. Patent No. 8,416,862
`
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.72 & 42.74, Petitioner
`
`OnePlus Technology (Shenzhen) Co., Ltd. (“Petitioner” or “OnePlus”) moves to
`
`terminate the present inter partes review proceeding. This Motion was authorized
`
`by the Board pursuant to its e-mail dated January 18, 2022.
`
`CERTIFICATION
`
`As reported to the Board, OnePlus and Patent Owner Bell Northern
`
`Research, LLC (“Patent Owner” or “BNR,” together with OnePlus the “Parties”)
`
`have entered into a settlement by way of a third-party which resolves the dispute
`
`amongst the Parties regarding the ’862 Patent. The settlement consists of: (1) an
`
`agreement between OnePlus and the third-party (the “OnePlus Agreement”); (2) a
`
`release agreement between BNR and OnePlus (the “Release Agreement”); and (3)
`
`an agreement between BNR and the third-party (the “BNR Agreement”)
`
`(collectively, the “Settlement Agreements”). OnePlus is concurrently filing copies
`
`of the OnePlus Agreement as Ex. 1022 and the Release Agreement as Ex. 1023,
`
`along with a request to treat Ex. 1022 as confidential business information pursuant
`
`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). After conferring with counsel for
`
`BNR, OnePlus understands that BNR will submit the BNR Agreement, which is
`
`confidential to BNR and the third-party, in response to this Unopposed Motion.
`
`1
`
`
`
`IPR2022-00048
`U.S. Patent No. 8,416,862
`
`
`OnePlus certifies that the OnePlus Agreement (Ex. 1022) and the Release
`
`Agreement (Ex. 1023) are true and accurate copies of the written agreements
`
`between the Parties and that, together with the BNR Agreement, these agreements
`
`resolve the Parties’ respective claims concerning the ’862 Patent and the present
`
`proceeding.
`
`STATUS OF RELATED PROCEEDINGS
`
`Petitioner identifies the following judicial and/or administrative matters that
`
`may affect, or may be affected by, a decision in the above-captioned Inter Partes
`
`Review:
`
`• Certain Electronic Devices Having Wireless Communication Capabilities
`
`and Components Thereof, Inv. No. 337-TA-1284 (ITC filed Sept. 24, 2021);
`
`• Bell Northern Research, LLC v. OnePlus Technology (Shenzhen) Co. Ltd., et
`
`al., No. 3:21-cv-2293 (NDTX filed Sept. 27, 2021).
`
`RELIEF REQUESTED
`
`Petitioner requests that the Board terminate this proceeding in its entirety.
`
`An inter partes review shall be terminated with respect to any petitioner upon the
`
`joint request of the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceedings before the request for termination is filed. 35 U.S.C.
`
`§ 317(a).
`
`2
`
`
`
`IPR2022-00048
`U.S. Patent No. 8,416,862
`
`
`Petitioner filed its Petition for inter partes review of the ’862 Patent on
`
`October 19, 2021 (Paper 1). The Petition has been accorded the filing date of
`
`October 29, 2021 (Paper 3), Patent Owner has not filed its preliminary response.
`
`Public policy favors terminating the present petition for inter partes review.
`
`Congress and the federal courts have expressed a strong interest in encouraging
`
`settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
`
`(1981) (“The purpose of [Federal Rules of Civil Procedure] 68 is to encourage the
`
`settlement of litigation.”); Bergy v. Dept. of Trans., 794 F.2d 1575, 1577 (Fed. Cir.
`
`1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986).
`
`The U.S. Court of Appeals for the Federal Circuit also places a particularly strong
`
`emphasis on 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). Furthermore, the Board’s Trial Practice Guide
`
`stresses that “[t]here are strong public policy reasons to favor settlement between
`
`the parties to a proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 46,768 (Aug. 14, 2012).
`
`Terminating this matter promotes the congressional goal of establishing a
`
`more efficient patent system by limiting unnecessary and counterproductive costs.
`
`See Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
`
`Proceedings, and Transitional Program for Covered Business Method Patents,
`
`3
`
`
`
`IPR2022-00048
`U.S. Patent No. 8,416,862
`
`
`77 Fed. Reg. 48,680 (Aug. 14, 2012). Permitting termination provides certainty
`
`and fosters an environment that promotes settlements, creating a timely, cost-
`
`effective alternative to litigation. Additionally, termination of this matter at the pre-
`
`institution stage is appropriate as the Board has not yet “decided the merits of the
`
`proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48768 (Aug. 14, 2012). The USPTO can conserve its resources through
`
`terminating now, removing the need for the Board to consider Petitioner’s
`
`arguments regarding institution. Furthermore, no other party’s rights will be
`
`prejudiced by the termination of this proceeding.
`
`Thus, termination of the present inter partes review proceeding is
`
`appropriate because (1) Petitioner and Patent Owner have resolved their disputes
`
`and claims regarding the ’862 Patent and agreed to terminate the proceeding, (2)
`
`the Board has not yet decided the merits of the proceeding, and (3) public policy
`
`favors termination.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner OnePlus Technology (Shenzhen) Co.,
`
`Ltd. respectfully request that the Board terminate this proceeding in its entirety.
`
`
`
`4
`
`
`
`Date: January 19, 2022
`
`
`
`
`IPR2022-00048
`U.S. Patent No. 8,416,862
`
`
`Respectfully submitted,
`
`/s/ Charles M. McMahon
`Charles M. McMahon (Reg. No. 44,926)
`cmcmahon@mwe.com
`Thomas M. DaMario (Reg. No. 77,142)
`tdamario@mwe.com
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street, Suite 4000
`Chicago, IL 60606
`T: 312-372-2000
`F: 312-984-7700
`OnePlusService@mwe.com
`
`Attorneys for Petitioner
`
`5
`
`
`
`IPR2022-00048
`U.S. Patent No. 8,416,862
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 19,
`
`2022, the foregoing document is being served via electronic mail upon the
`
`following counsel of record for Patent Owner:
`
`
`
`
`
`
`
`
`
`Timothy Devlin (Reg. No. 41,706)
`DEVLIN LAW FIRM LLC
`TD-PTAB@devlinlawfirm.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Thomas M. DaMario
`Thomas M. DaMario
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
