Bell Northern Research, LLC

Patent Trials and Appeals Board

Feb 10, 2022

IPR2021-01591 (P.T.A.B. Feb. 10, 2022)

Trials@uspto.gov Paper 8 571-272-7822 Date: February 10, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE INC., Petitioner, v. BELL NORTHERN RESEARCH, LLC, Patent Owner ____________ IPR2021-01591 Patents 7,957,450 B2 ____________ Before JAMESON LEE, BRYAN F. MOORE, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2021-01591 Patent 7,957,450 B2 2 INTRODUCTION With our emailed authorization, the parties filed a “Joint Motion to Dismiss Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.7[4].” Paper 7 (“Joint Motion to Terminate”). With our emailed authorization, the parties also filed a “Joint Motion to Keep [Settlement Agreement (Exhibit 2001)] Confidential and Separate under 35 U.S.C. § 317(B) and 37 C.F.R. § 42.74(C).” Paper 6 (“Joint Motion to Keep Separate”). The Joint Motion to Terminate explains that the parties “have entered into a written confidential settlement agreement that fully resolves this matter.” Paper 7, 1. The Joint Motion to Terminate further states that “[t]he parties agree that neither Patent Owner nor Petitioner will be prejudiced by termination of this proceeding.” Id. The parties have filed a copy of their settlement agreement as Exhibit 2001. Id. The Joint Motion to Terminate states: “The undersigned represents that Exhibit 2001 represents a true and accurate copy of the agreement between the parties (‘Confidential Settlement Agreement’) that resolves the present proceeding.” Id. JOINT MOTION TO TERMINATE 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. Patent Trial and Appeal Board, Consolidated Trial Practice Guide 86 (Nov. 2019).1 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 1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2021-01591 Patent 7,957,450 B2 3 circumstances, we grant the Joint Motion to Terminate as to both Petitioner and Patent Owner. JOINT MOTION TO KEEP SEPARATE The parties filed a Joint Motion to Keep Separate to treat the parties’ Settlement Agreement as business confidential information and have it kept apart from the file of Patent 7,957,450 B2 “pursuant to 35 U.S.C. § 317(b) (and) 37 C.F.R. § 42.74(c).” Paper 6 (emphasis added). We grant the request. We note that the Joint Motion to Keep Separate also states, in part, Petitioner and Patent Owner, jointly request that the settlement agreement(s) and collateral agreement(s) (if any) resolving the disputes between Petitioner and Patent Owner (Exhibit 2001) submitted in this case concurrently herewith be treated as business confidential information and kept separate from the files of the involved patent and inter partes review proceeding, and only made available to Federal Government agencies upon written request, or to any other person upon written request and a finding of good cause after notice to the parties to the agreement and an opportunity for those parties to respond to the request. Id. at 2 (emphasis added). The rule, however, does not require notice to the parties or allow for an opportunity for the parties to respond to the request. 37 C.F.R. § 42.74(c). Nor does the rule require that the Settlement Agreement be kept separate from the files of the inter partes review proceeding. Instead, the rule states, A party to a settlement may request that the settlement be treated as business confidential information and be kept separate from the files of an involved patent or application. The request must be filed with the settlement. If a timely request is filed, the settlement shall only be available: (1) To a Government agency on written request to the Board; or IPR2021-01591 Patent 7,957,450 B2 4 (2) To any other person upon written request to the Board to make the settlement agreement available, along with the fee specified in § 42.15(d) and on a showing of good cause. Id. (emphasis added). Thus, by granting the request “pursuant to” 37 C.F.R. 42.74(c), the files may be made available without notice to the parties to the agreement and without an opportunity for those parties to respond to the request, and the agreement need not be kept separate from the files of the inter partes review proceeding. See Paper 6. Also, we understand “written request” in the Joint Motion to Keep Separate to mean “written request to the Board,” as stated in the rule. See id. ORDER It is ORDERED that the Joint Motion to Dismiss (Paper 7) is granted both as to Petitioner and to Patent Owner; FURTHER ORDERED that the Joint Motion to Keep Separate (Paper 6) is granted, as explained above, under the terms of 37 C.F.R. § 42.74(c); FURTHER ORDERED that the Settlement Agreement (Ex. 2001) shall be treated as business confidential information, shall be kept separate from the file of Patent 7,957,450 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 to Patent Owner, and the Petition is dismissed. IPR2021-01591 Patent 7,957,450 B2 5 For PETITIONER: W. Karl Renner Jeremy J. Monaldo Timothy W. Riffe Jennifer Huang FISH & RICHARDSON P.C. axf-ptab@fr.com jjm@fr.com riffe@fr.com jhuang@fr.com For PATENT OWNER: Daniel S. Young Chad E. King ADSERO IP LLC dyoung@adseroip.com chad@adseroip.com