Trials@uspto.gov Paper 10
571-272-7822 Date: July 30, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,
v.
BELL NORTHERN RESEARCH, LLC,
Patent Owner.
___________
Case IPR2020-00698
Patent 7,039,435 B2
___________
Before BRYAN F. MOORE, STACY B. MARGOLIES, and
SCOTT E. BAIN, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2020-00698
Patent 7,039,435 B2
2
On June 8, 2020, the parties filed a Joint Motion to Terminate (Paper 7,
“Joint Motion”), settlement agreement (Exhibit 1030, “Agreement”), and a Joint
Request to Keep [the Agreement] Separate Pursuant to 35 U.S.C. § 317 and
37 C.F.R. § 42.74 (Paper 8, “Joint Request”).
In the Joint Motion, the parties state that they have settled their dispute
regarding the only claim from the challenged patent addressed in the Petition filed
in this proceeding, pursuant to the Agreement. Joint Motion 1. The parties also
state that no “public interest or other factors weigh against termination of this
proceeding.” Id. at 2.
This case is in its preliminary stages and we have not yet decided whether to
institute an inter partes review in this matter. Accordingly, we have not “decided
the merits of the proceeding” prior to the parties’ request for termination. See
35 U.S.C. § 317(a). The foregoing factors weigh in favor of granting the Joint
Motion. We discern no factors weighing against termination of the proceeding, on
this record. Accordingly, we grant the Joint Motion.
Similarly, we determine that, under the circumstances, it is appropriate to
treat the Agreement as business confidential information kept separate from the file
of the challenged patent. We, therefore, also grant the Joint Request.
ORDER
For the foregoing reasons, it is
ORDERED that the Joint Motion to Terminate is GRANTED, and the
proceeding is hereby terminated; and
FURTHER ORDERED that the parties’ Joint Request to Keep Separate is
GRANTED, and the Agreement (Ex. 1030) shall be treated as business
confidential information and kept separate from the file of the ’435 patent.
IPR2020-00698
Patent 7,039,435 B2
3
For PETITIONER:
Naveen Modi
naveenmodi@paulhastings.com
Joseph Palys
josephpalys@paulhastings.com
Quadeer Ahmed
quadeerahmed@paulhastings.com
Arvind Jairam
arvindjairam@paulhastings.com
For PATENT OWNER:
Steven Hartsell
shartsell@skiermontderby.com
Alexander Gasser
agasser@skiermontderby.com
Joseph Ramirez
jramirez@skiermontderby.com
