Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 10
`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.
`
`
`
`
`
`
`
`
`
`ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD.,
`Petitioner,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
`____________
`
`IPR2022-00048
`Patent 8,416,862 B2
`____________
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 10
`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.
`
`
`
`
`
`
`
`
`
`ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD.,
`Petitioner,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
`____________
`
`IPR2022-00048
`Patent 8,416,862 B2
`____________
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`IPR2022-00048
`Patent 8,416,862 B2
`
`
`
`INTRODUCTION
`Pursuant to our emailed authorization, the parties made several filings
`
`related to their desire to terminate the proceeding. Petitioner filed an
`Unopposed Motion to Terminate Proceeding Pursuant to 35 U.S.C. § 317(a).
`Paper 6 (“Motion to Terminate”). Patent Owner filed a response indicating
`that Patent Owner does not oppose Petitioner’s Motion to Terminate. Paper
`8. The Motion to Terminate explains that the parties have settled their
`dispute relating to Patent 8,416,862 B2, through a Third Party and the
`parties’ settlement agreement includes three parts: (1) an agreement
`between Petitioner and the Third Party (“OnePlus Agreement”); (2) a release
`agreement between Petitioner and Patent Owner (“Release Agreement”);
`and (3) an agreement between Patent Owner and the Third Party (“BNR
`Agreement”). Paper 6, 1.
`Petitioner filed the Release Agreement as Exhibit 1023 and the
`OnePlus Agreement as Exhibit 1022. Patent Owner filed the BNR
`Agreement as Exhibit 2001. Petitioner filed an “Unopposed Request That
`The Settlement Agreement [OnePlus Agreement (Ex. 1022)] Be Treated As
`Business Confidential Information And Be Kept Separate under 35 U.S.C.
`§ 317(b).” Paper 7 (“Petitioner Confidentiality Request”).1 Patent Owner
`filed an “Unopposed Request That The Settlement Agreement [BNR
`Agreement (Ex. 2001)] Be Treated As Business Confidential Information
`
`
`1 Petitioner states that Patent Owner does not oppose the content of the
`request. Paper 7, 1.
`
`2
`
`
`
`IPR2022-00048
`Patent 8,416,862 B2
`
`And Be Kept Separate under 35 U.S.C. § 317(b).” Paper 9 (“Patent Owner
`Confidentiality Request”).2
`
`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).3 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
`institute an inter partes review. Under these circumstances, we grant the
`Motion to Terminate (Paper 6) as to both Petitioner and Patent Owner.
`We also grant, in part only, Petitioner’s Confidentiality Request
`(Paper 7), unopposed by Patent Owner, which is to treat the OnePlus
`Agreement (Exhibit 1023) as business confidential information and 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). That portion of the request which states the
`following is denied, because no such requirement is contained in either 35
`U.S.C. § 317(b) or 37 C.F.R. § 42.74(c):
`OnePlus further requests that the Board order that in the
`event a person or entity makes a written request, as stated in 37
`C.F.R. § 42.74(c)(1)-(2), for access to the OnePlus Agreement,
`that any such written request be served upon OnePlus on the day
`the written request is provided to the Board and that OnePlus be
`provided an opportunity to respond to the request.
`Paper 7, 1.
`
`
`2 Patent Owner states that Petitioner does not oppose the content of the
`request. Paper 9, 1.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2022-00048
`Patent 8,416,862 B2
`
`
`We also grant, in part only, Patent Owner’s Confidentiality Request
`(Paper 9), unopposed by Petitioner, which is to treat the BNR Agreement
`(Exhibit 2001) as business confidential information and kept apart from the
`file of Patent 8,416,862 B2 pursuant to 37 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). That portion of the request which states the following is denied,
`because no such requirement is contained in either 35 U.S.C. § 317(b) or 37
`C.F.R. § 42.74(c):
`BNR further requests that the Board order that in the event
`a person or entity makes a written request, as stated in 37 C.F.R.
`§ 42.74(c)(1)-(2), for access to the BNR Agreement, that any
`such written request be served upon BNR on the day the written
`request is provided to the Board and that BNR be provided an
`opportunity to respond to the request.
`Paper 9, 1.
`
`ORDER
`
`It is
`ORDERED that the Petitioner’s Unopposed Motion to Terminate
`(Paper 6) is granted both as to Petitioner and Patent Owner;
`FURTHER ORDERED that Petitioner’s “Unopposed Request That
`The Settlement Agreement [OnePlus Agreement (Ex. 1022)] Be Treated As
`Business Confidential Information And Be Kept Separate under 35 U.S.C.
`§ 317(b)” is granted-in-part and denied-in-part, as explained above, under
`the terms of 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that Patent Owner’s “Unopposed Request
`That The Settlement Agreement [BNR Agreement (Ex. 2001)] Be Treated
`As Business Confidential Information And Be Kept Separate under
`35 U.S.C. § 317(b)” is granted-in-part and denied-in-part, as explained
`above, under the terms of 37 C.F.R. § 42.74(c);
`
`4
`
`
`
`IPR2022-00048
`Patent 8,416,862 B2
`
`
`FURTHER ORDERED that the OnePlus Agreement (Ex. 1022) and
`the BNR 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 Patent Owner, and the Petition is dismissed.
`
`
`
`
`
`
`5
`
`
`
`IPR2022-00048
`Patent 8,416,862 B2
`
`For PETITIONER:
`
`Charles M. McMahon
`Thomas M. DaMario
`McDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`tdamario@mwe.com
`
`
`For PATENT OWNER:
`
`Timothy Devlin
`Jeffrey F. Craft
`Devlin Law Firm LLC
`TD-PTAB@devlinlawfirm.com
`jcraft@devlinlawfirm.com
`
`
`
`6
`
`
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