`______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`MEDIATEK INC. and NXP USA, INC.,
`Petitioners,
`
`
`v.
`
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`______________
`Case IPR2023-01414
`Patent No. 8,416,862
`______________
`JOINT MOTION TO TERMINATE PROCEEDING AS TO PETITIONER
`MEDIATEK INC.
`
`
`
`
`
`Case IPR2023-01414
`Patent No. 8,416,862
`Petitioner MediaTek Inc. (“MediaTek”) and Patent Owner Bell Northern
`
`Research, LLC (“BNR”) have entered into a settlement agreement that resolves all
`
`underlying disputes between Petitioner MediaTek and Patent Owner BNR, including
`
`the related district court proceeding, Bell Northern Research, LLC v. Qualcomm Inc.
`
`et al., Case No. 8-23-cv-01065 (C.D. Cal) (the “CACD Litigation”), the related ITC
`
`proceeding, In the Matter of Certain Electronic Devices and Semiconductor Devices
`
`Having Wireless Communication Capabilities and Components Thereof, Case No.
`
`337-TA-1367 (ITC) (the “ITC Investigation”), and this inter partes review
`
`proceeding IPR2023-01414, involving U.S. Patent No. 8,416,862 (the ’862 patent”),
`
`currently before the Board.
`
`In an email dated May 23, 2024, the Board authorized the parties to file a joint
`
`motion to terminate as to Petitioner MediaTek and a joint request to treat the
`
`settlement agreement as business confidential information. In accordance with
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy of the settlement agreement
`
`between Petitioner MediaTek and Patent Owner BNR made in connection with, or
`
`in contemplation of, the termination of this proceeding is included with this request.
`
`The agreement ends all patent disputes between Petitioner MediaTek and Patent
`
`Owner BNR, including this IPR proceeding with respect to Petitioner MediaTek.
`
`Petitioner MediaTek and Patent Owner BNR jointly request that the Board
`
`terminate this proceeding with respect to Petitioner MediaTek. MediaTek and Patent
`
`1
`
`
`
`Case IPR2023-01414
`Patent No. 8,416,862
`Owner BNR note that granting this motion will not result in termination of the
`
`proceeding in its entirety, because Petitioner NXP USA, Inc. is not requesting
`
`termination. Pursuant to 35 U.S.C. § 317(a), “[a]n 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 proceeding before
`
`the request for termination is filed.” Termination is appropriate as to Petitioner
`
`MediaTek because the Board has not yet decided the merits of this inter partes
`
`review. Trial was instituted on April 2, 2024 [Paper 11]; however, Patent Owner
`
`BNR has not yet filed a Patent Owner’s Response and a Final Written Decision is
`
`not due until April 2, 2025, one year from institution.
`
`The ’862 Patent is subject to the following pending lawsuits in which
`
`Petitioner MediaTek is not a party:
`
`• Bell Northern Research, LLC v. NXP Semiconductors NV et al., Case
`
`No. 1:23-cv-00633 (W.D. Tex.).
`
`• Bell Northern Research, LLC v. ASUSTeK Computer, Inc. et al., Case
`
`No. 4:23-cv-00573 (E.D. Tex.).
`
`• Bell Northern Research, LLC v. AT&T Inc. et al., Case No. 4:23-cv-
`
`00789 (E.D. Tex.).
`
`• Bell Northern Research, LLC v. T-Mobile USA, Inc. et al., Case No.
`
`4:23-cv-00910 (E.D. Tex.).
`
`2
`
`
`
`Case IPR2023-01414
`Patent No. 8,416,862
`No other party’s rights would be prejudiced by the termination of this inter
`
`partes review as to Petitioner MediaTek. Petitioner NXP USA, Inc. does not oppose
`
`this motion and remains active in this proceeding. Accordingly, Petitioner MediaTek
`
`and Patent Owner BNR respectfully request that the Board grant this Joint Motion
`
`to Terminate as to Petitioner MediaTek.
`
`Respectfully submitted,
`
`Dated: May 31, 2024
`
`Dated: May 31, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Cory C. Bell/
`Cory C. Bell, Reg. No. 75,096
`Counsel for Petitioner MediaTek, Inc.
`
`
`
`/Jason M. Shapiro/
`Jason M. Shapiro, Reg. No. 35,354
`Counsel for Patent Owner Bell Northern
`Research, LLC
`
`
`
`
`3
`
`
`
`Case IPR2023-01414
`Patent No. 8,416,862
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Joint Motion
`
`To Terminate Proceeding as to Petitioner MediaTek, Inc. was served on May
`
`31, 2024, via email directed to counsel of record for Patent Owner at the following:
`
`Jason M. Shapiro
`Timothy Devlin
`Devlin Law Firm LLC
`1526 Gilpin Ave.
`Wilmington, DE 19806
`jshapiro@devlinlawfirm.com
`tdevlin@devlinlawfirm.com
`BNR-MEDIATEK-IPR@devlinlawfirm.com
`
`By: /Mark A. Rosenberger/
`Mark A. Rosenberger
`Case Manager
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`
`
`
`
`
`
`
`
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