`______________
`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 REQUEST TO TREAT SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION
`PURSUANT TO 35 U.S.C. § 317(b)
`
`
`
`
`
`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 is being submitted
`
`concurrently herewith in this proceeding as Ex. 1026. Because Petitioner NXP USA,
`
`Inc. is not requesting termination, the settlement agreement between Petitioner
`
`MediaTek and Patent Owner BNR has been filed for access by the “Board Only,”
`
`and the parties jointly request that the settlement agreement remain available for the
`
`“Board Only.”
`
`1
`
`
`
`Case IPR2023-01414
`Patent No. 8,416,862
`If requested, the rules permit the parties to have any filed settlement
`
`agreement treated as business confidential information and kept separate from the
`
`files of the involved patent. 37 C.F.R. § 42.74(c). Indeed, the statute requires it.
`
`At the request of a party to the proceeding, the agreement or
`
`understanding shall be treated as business confidential information,
`
`shall be kept separate from the file of the involved patents, and shall be
`
`made available only to Federal Government agencies on written
`
`request, or to any person on a showing of good cause.
`
`35 U.S.C. § 317(b).
`
`Accordingly, pursuant to 37 C.F.R. § 42.74(c) and 35 U.S.C. § 317(b),
`
`Petitioner MediaTek and Patent Owner BNR jointly request that the Board treat the
`
`settlement agreement filed concurrently herewith as Ex. 1026 as business
`
`confidential information, that the agreement be kept separate from the file of the
`
`involved patent, and that the agreement be made available only to Federal
`
`Government agencies on written request, or to other persons only on a showing of
`
`good cause.
`
`2
`
`
`
`Dated: May 31, 2024
`
`Dated: May 31, 2024
`
`
`
`
`
`
`
`
`
`Case IPR2023-01414
`Patent No. 8,416,862
`Respectfully submitted,
`
`
`
`
`
`/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 Request
`
`to Treat Settlement Agreement as Business Confidential Information Pursuant
`
`to 35 U.S.C. § 317(b) 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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