`571-272-7822
`
`
`
`
`
`Paper 21
`Entered: June 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` MEDIATEK INC. and NXP USA, INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
` BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`____________
`
`IPR2023-01414
`Patent 8,416,862 B2
`____________
`
`Before JEFFREY W. ABRAHAM, JOHN D. HAMANN, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`TERMINATION
`Granting Joint Motion to Terminate MediaTek Inc. as Petitioner
`After Institution of Trial and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`IPR2023-01414
`Patent 8,416,862 B2
`
`INTRODUCTION
`I.
`With Board authorization, MediaTek Inc. (“MediaTek”) and Bell
`Northern Research, LLC (“Patent Owner”) filed a Joint Motion to Terminate
`Proceeding as to Petitioner MediaTek Inc. in the above-identified
`proceeding (“Joint Motion”). Paper 16. MediaTek and Patent Owner
`previously sought authorization to file the Joint Motion and received that
`authorization via email on May 23, 2024. Joint Motion 1. MediaTek and
`Patent Owner also filed a Settlement Agreement (Exhibit 1026, “Settlement
`Agreement”) and a Joint Request to Treat Settlement Agreement as Business
`Confidential Information (Paper 17, “Joint Request”).
`II. DISCUSSION
`In the Joint Motion, MediaTek and Patent Owner represent that they
`have reached an agreement to jointly seek termination of MediaTek as
`Petitioner in the above-identified proceeding and that the filed copy of the
`Settlement Agreement is “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.” Joint Motion 1.
`We instituted trial in the above-identified proceeding. Paper 11. We
`have not yet decided the merits of the proceeding, and a final written
`decision has not been entered. Notwithstanding that the proceeding has
`moved beyond the preliminary stage, MediaTek and Patent Owner have
`shown adequately that termination of the proceeding with respect to
`MediaTek is appropriate. NXP USA, Inc. will remain as Petitioner in the
`above-identified proceeding.
`MediaTek and Patent Owner also request that the Settlement
`Agreement be treated as business confidential information and be kept
`separate from the file of Patent 8,416,862. Joint Request 1–2. After
`2
`
`
`
`
`
`IPR2023-01414
`Patent 8,416,862 B2
`reviewing the Settlement Agreement between MediaTek and Patent Owner,
`we find that the Settlement Agreement contains confidential business
`information regarding the terms of settlement. We determine that good
`cause exists to treat the Settlement Agreement as business confidential
`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion is granted, and IPR2023-01414 is
`terminated with respect to MediaTek, pursuant to 35 U.S.C. § 317(a) and 37
`C.F.R. § 42.72;
`FURTHER ORDERED that NXP USA, Inc. will remain as Petitioner
`in the above-identified proceeding, which will continue; and
`
`FURTHER ORDERED that the Joint Request is granted, and the
`Settlement Agreement shall be kept separate from the file of Patent
`8,416,862, and made available only to Federal Government agencies on
`written request, or to any person on a showing of good cause, pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2023-01414
`Patent 8,416,862 B2
`
`
`For PETITIONER:
`MediaTek:
`Cory C. Bell
`Luke H. MacDonald
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`cory.bell@finnegan.com
`luke.macdonald@finnegan.com
`
`NXP:
`Brian K. Erickson
`Brent Yamashita
`Martin Ellison
`Salvatore Tamburo
`Peiyao Zhang
`DLA PIPER LLP (US)
`brian.erickson@us.dlapiper.com
`brent.yamashita@us.dlapiper.com
`martin.ellison@us.dlapiper.com
`peiyao.zhang@us.dlapiper.com
`salvatore.tamburo@us.dlapiper.com
`
`For PATENT OWNER:
`Jason M. Shapiro
`Timothy Devlin
`DEVLIN LAW FIRM LLC
`jshpiro@devlinlawfirm.com
`tdevlin@devlinlawfirm.com
`
`
`
`
`4
`
`
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